USPTO Announces Expansion Of First Office Action Interview Pilot Program To All Utility Patent Applications

The United States Patent and Trademark Office (“USPTO”) has expanded existing pilot programs to provide patent applicants the ability to request an interview with a patent examiner prior to a first office action on the merits. The expanded program now includes all utility applications in all technology areas and filing dates, and will run through May 16, 2012. Importantly, no additional fees are required for participation in the expanded program.

The USPTO had first implemented its Enhanced First Action Interview Pilot Program in late 2009, which itself was a successor to a similar 2008 program. Originally, the program was limited to applications in certain art units covering inventions in specific classes of technology.

According to the USPTO’s statistics in its press release announcing the program expansion, Applicants requesting an interview before a first office action issues have a much better chance of obtaining a quick notice of allowance for their patent applications. The USPTO says that 34 percent of applications in the existing pilot programs were allowed on the first action on the merits, compared to around 11 percent on average generally.

Patent applicants must satisfy several requirements to have a request granted for an interview prior to a first office action, such as:

 - The application must be a non-reissue, non-provisional utility application or an international application that has entered the national stage;

- The application must contain three or fewer independent claims and twenty or fewer total claims, and must not contain any multiple dependent claims;

- The claims must be directed to a single invention;

- The request for a first action interview must be filed electronically using the USPTO’s EFS-Web electronic filing system;

- The request must be filed at least one day before a first office action on the merits appears in the USPTO’s Patent Application Information Retrieval (PAIR) system; and

- The interview request must include a statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application.

Applicants that request participation in the expanded program but who do not comply with the requirements above will still have an opportunity to correct defects in their requests. The USPTO will notify applicants of any problems by issuing a Notice of Non-Compliant First Action Interview Request, and applicants will then have to file a proper request and make appropriate corrections within one month. No extensions of time for this will be available.

Once a request is granted, the examiner will conduct a prior art search and provide the applicant with a condensed pre-interview communication. Within 30 days of receipt, the applicant will need to schedule an interview and submit proposed amendments and/or arguments.  At the interview, the prior art, any rejections, and the proposed amendments and arguments will be discussed.  If no agreement is reached between the applicant and the examiner, a First Action Interview Office action that includes an interview summary will follow.