USPTO Extends First Action Interview Program through August 16, 2012

The USPTO recently announced that it is extending its successful First Action Interview Pilot Program — but applicants must act fast, as the extension will only last for a few weeks.  In a July 9, 2012 Federal Register notice, the USPTO announced that it will extend the program through August 16, 2012 while it evaluates whether to make the program permanent.

In my experience, the program has been very useful, as it helps to engage the Examiner in a dialogue about allowable subject matter early in the case.  According to the USPTO, under the program:

Since the date that the pilot was expanded, the USPTO has received over 2100 requests to participate in the program.   Of the applications that have been taken up for examination since the expansion, the Office has allowed over 35% on first action.

The USPTO also notes that applicants who choose the program may receive several benefits, including  “resolving patentability issues one-on-one with the examiner at the beginning of the prosecution process, rather than after a first Office action; and . . . expedited allowance of an application, relative to standard examination, due to the program’s enhanced communication and shorter time periods for response.”

Any new or existing patent application may participate in the program, so long asit (a) meets certain limitations relating to the number of claims presented for examination, and (b) has not yet received a first office action.  To request a pre-examination interview, applicants must submit a form in which the applicant agrees to not (i) traverse any restriction requirement and (ii) request a refund of any search or excess claims fees.

If the application meets the program criteria, before the first office action the examiner will issue a search report with relevant prior art and proposed rejections or objections.  Within 30 days of the report, the applicant may submit proposed amendments and/or written arguments to be discussed in the interview.  The examiner and applicant will then meet to try to reach agreement.  The USPTO has published a set of examiner talking points that applicants should expect the examiner to cover in the interview.

August 2012 update:  The USPTO announced another extension to the First Action Interview Pilot Program, this time through November 16, 2012.

November 2012 update:  In November 2012, the USPTO announced that it will continue the program beyond November 16, 2012 until further notice.

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