| General Information |
Referenced Items (101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, 117, 118, 119, 120, 121, 122, 123, 124, 125) |
(107) First Action Interview Pilot Program
Summary: The United States Patent and Trademark Office (USPTO) is
initiating a pilot program in which, in certain art areas, applicants who
comply with the requirements set forth in this notice will receive the
results of a prior art search conducted by the examiner, via a condensed
Pre-Interview Communication, and then be permitted to conduct an interview
with the examiner to discuss the cited prior art references, before the
examiner issues an Office action on the merits that sets forth the
rejections. An interview under this pilot program would advance prosecution
of the application because it would enhance the interactions between the
applicant and the examiner, provide applicant the opportunity to resolve
patentability issues one-on-one with the examiner at the beginning of the
prosecution process, and facilitate possible early allowance. Currently,
granting an interview before first action on the merits of a new
application is within the discretion of the examiner, who has not yet
searched the case, and a showing may be required to justify the granting of
the interview. See MPEP § 713.02. The pilot program provides a procedure
which, if followed, makes the granting of an interview non-discretionary.
For those applicants who are eligible and wish to participate in the pilot
program, applicants must file a request electronically.1 When the
application is taken up for examination, the examiner will conduct a prior
art search and provide applicant a Pre-Interview Communication that
includes citations to prior art references from the prior art search
(similarly to a search report) and an identification of any potential
rejections and/or objections, if any claim is not allowable. Once the
applicant reviews the prior art references, applicant must either file a
request to not have a first action interview with the examiner, or schedule
the interview and file a proposed amendment or remarks (arguments), within
one month or thirty days from the issue date2 of the Pre-Interview
Communication. If applicant chooses not to have a first action interview, a
First Action Interview Office Action will be promptly issued and applicant
will have one month or thirty days, whichever is longer, to reply. If an
interview is scheduled, applicant must be prepared to discuss issues
related to the patentability of the claims. If the applicant and the
examiner reach agreement during the interview on all claims at issue in
regard to patentability, a Notice of Allowability and Notice of Allowance
and Fees Due will be issued promptly after the interview. If agreement is
not reached on all claims in regard to patentability, at the conclusion of
the interview, applicant may be given a courtesy copy of a First Action
Interview Office Action (before mailing), which will set forth any
requirements, objections, and rejections. Once mailed the First Action
Interview Office Action, coupled with the interview and accompanying
interview summary form, will be considered a first Office action on the
merits. Applicant will be given one month or thirty days, whichever is
longer, from the issue date of the First Action Interview Office Action to
reply, with limited extensions of time.
1 See the Requirements section of this notice for more information on other
requirements for the pilot program.
2 Use of the phrase "issue date" is in anticipation of the possibility that
alternative forms of notification other than postal mailing of an action
may become available during this pilot.
Effective Date: April 28, 2008
The pilot program will last until November 1, 2008. Any request for a first
action interview filed on or after April 28, 2008, and before November 1,
2008, will be granted if all of the requirements set forth in the
Requirements section of this notice are satisfied.
Eligibility: New utility applications that fall within either Group I or
Group II as outlined below may be eligible for the First Office Action
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Interview Pilot Program:
Group I:
(1) Filed on or before September 1, 2005, and prior to a first action on
the merits;
(2) Classified in Class 709 (Electrical Computers and Digital Processing
Systems: Multi-Computer Data Transferring); and
(3) Assigned to an art unit in either working group 2140 (group art unit
214x) or 2150 (group art unit 215x).
GrouII:
(1) Filed on or before November 1, 2006, and prior to a first action on
the merits;
(2) Classified in Class 707 (Data Processing: Database and File
Management or Data Structures); and
(3) Assigned to an art unit in working group 2160 (group art unit 216x).
Class and art unit assignment data are available via the Patent Application
Information Retrieval System (PAIR) at Public PAIR link
http://portal.uspto.gov/external/portal/pair.
Requirements: A request for a first action interview will be granted in an
application that is eligible for the First Office Action Interview Pilot
Program (as indicated above) if the following conditions are satisfied:
(1) The application must be a non-reissue non-provisional utility
application filed under 35 U.S.C. 111(a), or an international application
that has entered the national stage in compliance with 35 U.S.C. 371(c).
(2) The application must contain three or fewer independent claims and
twenty or fewer total claims. The application must not contain any multiple
dependent claims.
(3) The request for a first action interview must be filed electronically
using the USPTO's electronic filing system, EFS-Web. Applicant should use
form PTO/SB/413C, which is available on the USPTO web site at
http://www.uspto.gov/web/forms/index.html.
(4) The request must be filed at least one day before a first Office action
on the merits of the application appears in the Patent Application
Information Retrieval (PAIR) system (at least one day prior to the date
when a first Office action on the merits, notice of allowability or
allowance, or action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11
(1935), appears in the PAIR system). Applicant may check the status of the
application using the PAIR system.
(5) Applicant must agree not to file a request for a refund of the search
fee and any excess claim fees paid in the application after the issue date
of the Pre-Interview Communication. Any petition for express abandonment
under 37 CFR 1.138(d) to obtain a refund of the search fee and any excess
claim fees paid or request for a refund of any excess claim fees will not
be granted. No search fee and excess claim fees will be refunded after the
issue date of a Pre-Interview Communication. The request must include a
statement that applicant agrees not to file a request for a refund of the
search fee and any excess claim fees paid in the application after the
issue date of the Pre-Interview Communication. See form PTO/SB/413C.
The application under the First Action Interview Pilot Program will not be
advanced out of turn for examination, but most likely will be taken up for
examination in the order of its effective United States filing date in
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accordance with MPEP § 708. Thus, a petition to make special under 37 CFR
1.102(c) is not required for an application to be eligible for the First
Action Interview Pilot Program.
Requirement for Restriction: If the application contains two or more
independent and distinct inventions, the examiner may make a requirement
for restriction in accordance with current restriction practice prior to
conducting a search. The examiner will contact the applicant and follow the
procedure for the telephone restriction practice set forth in MPEP
§ 812.01. Applicant is encouraged to make an election without traverse during
the telephone interview in order to expedite examination. If applicant
cannot make an election over the phone, or the examiner cannot reach the
applicant after a reasonable effort (not to exceed three business days),
the examiner will issue a restriction requirement in accordance with
current policy and practice. See MPEP § 814 et seq. After an appropriate
election is made in an application with a compliant request for a first
action interview, the examiner will proceed with the preparation of the
Pre-Interview Communication.
Improper Requests for First Action Interviews: If applicant files a request
for a first action interview that does not comply with the requirements set
forth in this notice, the Office will notify the applicant of the
deficiency by issuing a Notice of Non-Compliant First Action Interview
Request (PTOL-413NC). If applicant still wishes to participate in the First
Action Interview Pilot Program, applicant must file a proper request and
make appropriate corrections within one month or 30 days, whichever is
longer. This time period for reply is not extendable under 37 CFR 1.136(a).
If applicant fails to correct the deficiency indicated in the Notice of
Non-Compliant First Action Interview within the time period set forth
therein, the application will not be eligible for the First Action
Interview Pilot Program and the examiner will proceed with the preparation
of a first Office action on the merits of the application in due course.
Pre-Interview Communication: If the application contains only one invention
or applicant has elected one invention, the examiner will conduct a prior
art search for the claimed invention under consideration. If the examiner
determines that the application is in condition for allowance or the
application could be placed in condition for allowance with minor
corrections or a possible amendment or submission, a first action interview
under the pilot program will not be necessary. The examiner may allow the
application, or contact the applicant and conduct a regular interview in
accordance with MPEP § 713 to discuss any possible amendment or submission
to place the application in condition for allowance. Otherwise, the
examiner will prepare a Pre-Interview Communication (PTOL-413FP) and a
Notice of References Cited (PTO-892) citing the prior art references and
identifying potential rejections or objections.
The Pre-Interview Communication (PTOL-413FP) will set forth a time period
of one month or 30 days, whichever is longer, within which applicant must
file either: (1) a letter requesting to not have a first action interview,
or (2) an Applicant Initiated Interview Request Form (PTOL-413A)
accompanied by a proposed amendment or arguments, to avoid the abandonment
of the application. This time period for reply is not extendable under 37
CFR 1.136(a).
The examiner's typical working schedule will also be provided with the
Pre-Interview Communication (PTOL-413FP) so applicant will be aware of the
examiner's availability when scheduling the interview.
Once a Pre-Interview Communication (PTOL-413FP) has been issued in an
application, applicant no longer has a right to amend the application until
the first action interview is conducted and the First Action Interview
Office Action is mailed. Any amendment other than a proposed amendment
filed after the issue date of the Pre-Interview Communication (PTOL-413FP),
but before the interview and/or issue date of a First Action Interview
Office Action (PTOL-413FA), will not be entered, unless approved by the
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examiner. This is because the examiner has devoted a significant amount of
time to the preparation of the Pre-Interview Communication before the
amendment will be received. See 37 CFR 1.115(b) and MPEP § 714.01(e). The
Office may enter the amendment if it is clearly limited to: cancellation of
claims; adoption of examiner suggestions; placement of the application in
prima facie condition for allowance; and/or correction of informalities
(similar to the treatment of an after-final amendment). Amendments will be
entered solely at the examiner's discretion.
Request to Not Have a First Action Interview: If applicant files a letter
requesting to not have a first action interview within one month or 30
days, whichever is longer, from the issue date of the Pre-Interview
Communication (PTOL-413FP), a first action interview will not be conducted.
The examiner will then set forth the requirements, objections, and
rejections in the First Action Interview Office Action (PTOL-413FA) in due
course.
The First Action Interview Office Action (PTOL-413FA) is the first Office
action on the merits because it sets forth all requirements, objections and
grounds of rejection including the identification of the prior art
references, statutory basis for the rejection, and the claims being
objected to or rejected. Because the requirements, objections and grounds
of rejection are provided in the Pre-Interview Communication (PTOL-413FP)
and the First Action Interview Office Action (PTOL-413FA), applicant has
sufficient notice of the requirements, objections and grounds of rejection.
To avoid abandonment of the application, applicant must, within one month
or 30 days, whichever is longer, from the issue date of the First Action
Interview Office Action (PTOL-413FA), file a reply in compliance with 37
CFR 1.111. This time period for reply is extendable under 37 CFR 1.136(a)
for only one additional month.
Applicant Must Timely Schedule the Interview: Upon review of the
Pre-Interview Communication (PTOL-413FP), if applicant still wants a first
action interview with the examiner, applicant must file within one month
or 30 days, whichever is longer, an Applicant Initiated Interview Request
Form (PTOL-413A), or an equivalent paper. Applicant must designate a
proposed date for the interview accompanied by a proposed amendment or
remarks (arguments) as an attachment to the request, to schedule the first
action interview. The applicant's proposed date for the interview can be no
more than two months or 60 days, whichever is longer, from the issue date
of the Pre-Interview Communication (PTOL-413FP). Applicants should consult
the examiner's work schedule provided in the PTOL-413FP and discuss with
the examiner the best date for conducting the interview. The applicant's
failure to conduct an interview within two months or 60 days from the issue
date will be treated as a failure to respond to the Pre-Interview
Communication. The interview may be in person, telephonic or
video-conferenced. Applicant must provide written authorization to conduct
any Internet e-mail communications with the examiner. See MPEP § 502.03 for
more information.
Inventor Participation: Inventor participation in the interview process is
encouraged, as it may assist in the resolution of outstanding rejections
and/or objections.
Failure to respond to Pre-Interview Communication: Failure to timely
respond to the Pre-Interview Communication either by not submitting a
request not to conduct the first action interview or to schedule the
interview will result in abandonment of the application.
Preparation for the Interview: Applicant must be prepared to fully discuss
the prior art of record, any of the relevant interview talking points and
any potential rejections or objections with the intent to clarify and
resolve all issues with respect to patentability during the interview.
Applicant must also be prepared to discuss any proposed amendment or
remarks (arguments) previously submitted and discuss and resolve any
relevant issues that arise.
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Applicant may file a proposed amendment or remarks (arguments) for
discussion during the interview. Multiple proposed amendments or sets of
remarks (arguments) are not permitted. The proposed amendment or remarks
(arguments) must be clearly labeled as "PROPOSED" at the header or footer
of each page of the proposed amendment or remarks (arguments) and filed as
an attachment to the Applicant Initiated Interview Request Form
(PTOL-413A), or an equivalent paper. The proposed amendment or remarks
(arguments) will not be entered as a matter of right. The examiner, based
upon discussions, feedback and agreement with applicant during the
interview may at his or her discretion enter the amendment into the record
if found sufficient to advance prosecution on the merits. See MPEP
§§ 713.01 III and 713.04; see also MPEP §§ 714 and 1302.04.
A non-exhaustive listing of potential topics for discussion in a first
action interview will be made available to the public and the patent
examining corps to assist and facilitate comprehensive and effective first
action interviews. See the list of topics provided in the Interview Talking
Points posted on the USPTO web site at
http://www.uspto.gov/web/offices/pac/dapp/opla/faipp.htm.
First Action Interview: The interview will be conducted in accordance with
the procedure provided in MPEP § 713 except as otherwise provided in this
notice. The interview should focus on and include:
1. A discussion to assist the examiner in developing a better
understanding of the invention;
2. A discussion to establish the state of the art at the time the
invention was made, including the prior art references cited by the
applicant and the examiner; and
3. A discussion of the features of the claimed subject matter which make
the invention patentable, including any proposed amendments to the
claims.
An agreement is reached: At the conclusion of the interview, if applicant
and the examiner reach agreement that the application is in condition for
allowance, the examiner must complete an Interview Summary (PTOL-413),
enter and attach any necessary amendments or arguments (e.g., the proposed
amendment and/or an examiner's amendment), generate a notice of
allowability (PTOL-37) and attach a copy of the completed Applicant
Initiated Interview Request Form (PTOL-413A). In a personal interview, a
courtesy copy of the completed forms will be given to the applicant at the
conclusion of the interview. The completed forms will then be made of
record and promptly mailed with a PTOL-85 Notice of Allowance and Fees Due.
An agreement is not reached: If the applicant and the examiner do not reach
agreement during the interview, the examiner will set forth the
requirements, objections, and rejections in the First Action Interview
Office Action (PTOL-413FA). The examiner will also complete an Interview
Summary (PTOL-413), attach a copy of the completed Applicant Initiated
Interview Request Form (PTOL-413A) and any proposed amendments or
arguments. In a personal interview, a courtesy copy of the completed forms
may be given to the applicant at the conclusion of the interview. The
completed forms will be made of record and promptly mailed to the
applicant.
The First Action Interview Office Action (PTOL-413FA) is a first Office
action on the merits as it sets forth all the requirements, objections and
grounds of rejection including the identification of the prior art
references, statutory bases for the rejections, and the claims being
objected to or rejected. Because the requirements, objections and grounds
of rejection are proposed in the Pre-Interview Communication (PTOL-413FP)
and provided in the First Action Interview Office Action (PTOL-413FA),
coupled with the oral interview and accompanying Interview Summary
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(PTO-413), applicant has sufficient statutory notice of the requirements,
objections and grounds of rejection. To avoid abandonment of the
application, applicant must, within one month or 30 days, whichever is
longer, from the issue date of the First Action Interview Office Action
(PTOL-413FA), file a reply in compliance with 37 CFR 1.111. This time
period for reply is extendable under 37 CFR 1.136(a) for only one
additional month.
Substance of Interview Must be Made of Record: A complete written statement
as to the substance of the interview with regard to the merits of the
application must be made of record in the application, whether or not an
agreement with the examiner was reached at the interview. It is the
responsibility of applicant to make the substance of an interview of record
and it is the examiner's responsibility to see that such a record is made
and to correct inaccuracies, including those which bear directly on the
question of patentability. See MPEP § 713.04.
Contacts: Any inquiries concerning the Office's electronic filing system
(EFS-Web) or the Patent Application Information Retrieval (PAIR) system
should be directed to the Electronic Business Center at 866-217-9197. Any
inquiries concerning a specific application should be directed to the
appropriate Technology Center. Any questions concerning this notice may be
directed to Joseph Weiss (by phone (571) 272-7759), Legal Advisor, Office
of Patent Legal Administration, or e-mailed to PatentPractice@USPTO.gov.
Any inquiries regarding this pilot program can be e-mailed to
first.action.interview@uspto.gov.
March 24, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1329 OG 159]