USPTO Announces Full First Action Interview Pilot Program

USPTO Press Release 11-33

The United States Patent and Trademark Office (USPTO) today announced the Full First Action Interview Pilot Program, which is an expansion of the Enhanced First Action Interview Pilot Program so as to include all utility applications in all technology areas and filing dates. As with the previous First Action Interview pilot programs (which included the Original and the Enhanced pilots), the applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. This pilot will run through May 16, 2012.

Participants in the previous First Action Interview pilots experienced many benefits including: (1) the ability to advance prosecution of an application; (2) enhanced interaction between the applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process and; (4) the opportunity to facilitate early allowance. Approximately 34 percent of the applications in the First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said, “We’re expanding this pilot program because we’ve seen that, by enhancing the interaction between the applicant and the examiner early in the examination process, it helps both applicants and the USPTO. We hope that by expanding the pilot to even more technology areas, we will see many more applicants take advantage of this program and realize its benefits.”

For applications in the program, the examiner will conduct a prior art search and provide the applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, the applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, and proposed amendments and arguments will be discussed. If agreement is not reached, the applicant will then receive First Action Interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.