| General Information |
Referenced Items (113, 114, 115, 116, 117, 118, 119, 120, 121, 122, 123, 124, 125, 126, 127, 128, 129, 130, 131, 132, 133, 134, 135, 136, 137) |
(118) Full First Action Interview Pilot Program
I. Summary: The United States Patent and Trademark Office (USPTO)
conducted the Enhanced First Action Interview Pilot Program in which utility
applicants in certain art areas could participate. See Enhanced First
Action Interview Pilot Program, 1347 Off. Gaz. Pat. Office 173 (October 20,
2009). The USPTO indicated in the notice the program would run until
April 1, 2010. The USPTO extended the program to run until April 1, 2011.
See Extension of the Enhanced First Action Interview Pilot Program, 1354
Off. Gaz. Pat. Office 51 (May 4, 2010) and Second Extension of the Enhanced
First Action Interview Pilot Program, 1360 Off. Gaz. Pat. Office 56
(November 2, 2010). Under the program, participants were permitted to
conduct an interview with the examiner after reviewing a Pre-Interview
Communication providing the result of a prior art search conducted by the
examiner. Participants experienced many benefits including: (1) the
ability to advance prosecution of an application; (2) enhanced interaction
between 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 possible early
allowance. Based upon comments and suggestions from the public, including
participants and non-participants, as well as the Patent Office Professional
Association (POPA), the Office is expanding the Enhanced First Action
Interview Pilot Program to all utility art areas. The Full First Action
Interview Pilot Program will continue until May 16, 2012.
Normally, granting an interview before first action on the merits of a
new application is within the discretion of the examiner and a showing may
be required to justify the granting of the interview. See Manual of Patent
Examining Procedure (MPEP) § 713.02. As in the Enhanced First Action
Interview Pilot Program, the Full First Action Interview Pilot Program will
continue to provide 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 electronically1. 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 (similar to a
search report) and an identification of any rejections and/or objections,
if at least one 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, whichever is longer,
from the mailing or notification 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 entered 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 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, which will set
forth the requirements, objections, and rejections. Applicant will be
given one month or thirty days, whichever is longer, from the mailing or
notification date of the First Action Interview Office Action to reply,
with limited extensions of time.
II. Effective Date: Any request for a First Action Interview filed on or
after April 1, 2011, and before May 16, 2012, will be granted if all of the
requirements set forth in Section III (Requirements) of this notice are
satisfied.
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III. Requirements: A request for a first action interview will be granted
in a patent application for the Full First Office Action Interview Pilot
Program 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. For an application that contains more
than three independent claims or twenty total claims, or multiple
dependent claims, applicants may file a preliminary amendment in
compliance with 37 CFR 1.121 to cancel the excess claims and/or the
multiple dependent claims when attempting to make the application
eligible for the pilot program.
(3) The claims must be directed to a single invention. If the Office
determines that the claims are directed to multiple inventions
(e.g., in a restriction requirement), the applicant must make an
election without traverse or withdraw the application from the pilot
program.
(4) 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.
(5) 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 (i.e., 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.
(6) The request for a first action interview 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 mailing or notification date of the Pre-Interview Communication.
See form PTO/SB/413C. Any petition for express abandonment under 37
CFR 1.138(d), request for a refund of search fee, and any excess
claim fees filed after the mailing or notification date of a
Pre-Interview Communication will not be granted.
The application under the Full 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 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 Full
First Action Interview Pilot Program. Furthermore, no additional fees are
required for participation in the Full First Action Interview Pilot Program.
IV. Improper Requests for First Action Interviews: If applicant files a
Request for the Full First Action Interview Pilot Program (PTO/SB/413C)
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 Full First Action Interview Pilot
Program, applicant must file a proper request and make appropriate
corrections within one month or thirty 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
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Non-Compliant First Action Interview Request and timely file a request for
reconsideration at least one day before a first Office action on the merits
of the application appears in the PAIR system (see item 5 of Section III
above) or within the time period set forth in the Notice of Non-compliant
First Action, whichever is longer, the examiner will proceed with the
preparation of a first Office action on the merits of the application in
due course, and the application will not be eligible for the Full First
Office Action Interview Pilot Program.
V. 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. If applicant makes an election during the telephone interview,
the election must be made without traverse in order to stay in the pilot
program. When an oral election is made, the examiner will provide a
complete record of the telephone election, including the restriction
requirement and applicant's election, as an attachment to the Pre-Interview
Communication on the elected invention.
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. When
applicant makes an election in response to the written restriction, the
election must be made without traverse in order to stay in the pilot
program. After an appropriate election is made without traverse in an
application with a compliant request for a First Action Interview, the
examiner will proceed with the preparation of the Pre-Interview
Communication.
VI. Pre-Interview Communication: If the application contains only one
invention or applicant has elected one invention without traverse, 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 Full First Action Interview Pilot Program
will not be necessary. The examiner may allow the application, or contact
the applicant and conduct a regular interview in accordance with MPE § 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 any rejections or objections. The
Pre-Interview Communication will set forth a time period of one month or
thirty days, whichever is longer. The Office will permit applicant to
extent this time period for reply pursuant to 37 CFR 1.136(a) for one
additional month under the Full First Action Interview Pilot Program. See
section VII, subsection B (Applicant's Options and Reply to Pre-Interview
Communication) and subsection C (Failure to Respond to Pre-Interview
Communication).
The examiner's typical working schedule will also be provided with the
Pre-Interview Communication so applicant will be aware of the examiner's
availability when scheduling the interview.
VII. Post Pre-Interview Communication
A. Amendments Filed After Pre-Interview Communication: Once a
Pre-Interview Communication has been entered 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. Therefore, any amendments filed before the interview and the
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mailing or notification date of a First Action Interview Office Action
(PTOL-413FA), will not be entered, unless approved by the examiner or in
accordance with the procedure of the Full First Action Interview Pilot
Program in section VII, subsection B(2), or section VIII, subsection B(3),
of this notice. This is because the examiner has devoted a significant
amount of time to the preparation of the Pre-Interview Communication. 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.
B. Applicant Options and Reply to Pre-Interview Communication: Upon
receipt of a Pre-Interview Communication, the applicant has three options:
(1) File a request to NOT have a first action interview waiving the
first action interview;
(2) File a reply under 37 CFR 1.111 waiving the first action interview
and First Action Interview Office Action - applicant is accepting
that the Pre-Interview Communication is the first Office action on
the merits; or
(3) Schedule the first action interview - applicant must file an
Applicant Initiated Interview Request Form (PTOL-413A) electronically
via EFS-Web, accompanied by a proposed amendment or arguments, and
schedule the interview to be conducted within two months or sixty
days, whichever is longer, from the filing of the Applicant
Initiated Intervies Request.
1. Request to Not Have a First Action Interview: If applicant wishes not
to have the first action interview, applicant should electronically file
a letter requesting to not have a first action interview within the time
period set forth in the Pre-Interview Communication. For this situation,
a first action interview will not be conducted and the examiner will
provide the First Action Interview Office Action to set forth the
requirements, objections, and rejections, in due course. However, such
a request will not preclude the examiner from contacting the applicant
and conducting a regular interview in accordance with MPEP § 713 to
discuss any issues or possible amendment to place the application in
condition for allowance. To ensure that the request will be processed
and recognized timely, applicant should file the request electronically
via EFS-Web, selecting the document description "Request to Not Have a
First Action Interview" on the EFS-Web screen.
Once a Pre-Interview Communication has been prepared (one day before it
appears in PAIR), withdrawal from the program is not permitted. The Office
will treat a request for withdrawal from the pilot program filed after the
mailing or notification of a Pre-Interview Communication as a request to
not conduct an interview, and enter a First Action Interview-Office Action,
in due course.
2. File a Reply under 37 CFR 1.111, Waiving the First Action Interview and
First Action Interview Office Action: Under the Full First Action
Interview Pilot Program, the Office is permitting applicants to file, in
conjunction with a request to not conduct the interview, a reply in
compliance with 37 CFR 1.111(b)-(c) to address every rejection,
objection and requirement set forth in the Pre-Interview Communication,
thereby waiving the first action interview and First Action Interview
Office Action. The reply under 37 CFR 1.111 must be filed within the
time period for reply set forth in the Pre-Interview Communication. To
ensure that the request will be processed and recognized timely,
applicant should file the request electronically via EFS-Web, selecting
the document description "Reply under 1.111 to Pre-Interview
Communication" on the EFS-Web screen.
In this situation, a first action interview will not be conducted and a
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First Action Interview Office Action will not be provided to the applicant.
The Pre-Interview Communication will be deemed the first Office action on
the merits. The examiner will consider the reply under 37 CFR 1.111 and
provide an Office action in response to the reply, in due course. The
Office action will be the second Office action on the merits, and thus it
could be a final Office action, a notice of allowability, or other
appropriate action.
3. Schedule the First Action Interview: If applicant wants a first action
interview with the examiner, applicant must timely file an Applicant
Initiated Interview Request Form (PTOL-413A), electronically using
EFS-Web, accompanied by a proposed amendment and/or arguments (as an
attachment to the request). To ensure that the request will be
processed and recognized timely, applicant should select the document
description "First Action Interview - Schedule Interview Request."
Applicant must also designate a proposed date to conduct the interview
to facilitate scheduling of the first action interview. The applicant's
proposed date to conduct the interview must be within two months or sixty
days, whichever is longer, from the filing of the Applicant Initiated
Interview Request Form. Applicant should consult the examiner's work
schedule provided in the Pre-Interview Communication and discuss with the
examiner the best date for conducting the interview.
After filing the Applicant Initiated Interview Request Form, applicant
must contact the examiner to confirm the interview date. The applicant's
failure to conduct an interview within two months or sixty days, whichever
is longer, from the filing of Applicant Initiated Interview Request Form
will be treated as a failure to respond to the Pre-Interview Communication.
See section VII, subsection C (Failure to Respond to Pre-Interview
Communication). The interview may be in person, telephonic or a
video-conference. Applicant must provide written authorization to conduct
any Internet e-mail communications with the examiner. See MPEP § 502.03
for more information.
The proposed amendment or arguments must be clearly labeled as "PROPOSED"
at the header or footer of each page of the proposed amendment or arguments
and filed electronically via EFS-Web as an attachment to the Applicant
Initiated Interview Request Form. The proposed amendment or 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 if found sufficient to advance
prosecution on the merits. See MPEP §§ 713.01 III and 713.04; see also
MPEP §§ 714 and 1302.04. If the examiner denies entry of the proposed
amendment, the proposed amendment will be placed in the application file.
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 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 arguments previously
submitted and discuss and resolve any relevant issues that arise. A
non-exhaustive listing of potential topics for discussion in a first action
interview is available to the public and the patent examining corps to
assist and facilitate comprehensive and effective first action interviews.
See the Interview Talking Points posted on the USPTO Web site at
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_talking_
points.pdf.
Multiple proposed amendments or sets of arguments are not permitted.
Inventor Participation: Inventor participation in the interview process is
encouraged, as it may assist in the resolution of outstanding rejections
and/or objections.
C. Failure to Respond to Pre-Interview Communication: Under the Full
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First Action Interview Pilot Program, if applicant fails to: (1) respond
to the Pre-Interview Communication within the time period for reply, or (2)
conduct the interview within two months or sixty days, whichever is longer,
from the filing of the Applicant Initiated Interview Request Form, the
Office will enter a First Action Interview Office Action. Therefore, the
consequence for failure to respond is issuance of a First Action Interview
Office Action without the benefit of an interview.
VIII. First-Action Interview and First-Action Interview Office Action
A. 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.
B. There are Three Possible Outcomes of a First-Action Interview:
1. An agreement is reached and all claims are in condition for
allowance. 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. If the examiner agrees to enter the
proposed amendment, the examiner must annotate the proposed amendment
(e.g., "OK to enter") on the first page of the proposed amendment. 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 promptly made of record with a Notice of Allowance
and Fees Due (PTOL-85).
2. An agreement as to allowability 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. The examiner will also complete an Interview
Summary, and attach a copy of the completed Applicant Initiated Interview
Request Form 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
promptly made of record.
For this situation, the First Action Interview Office Action is the
first Office action on the merits. Because the requirements, objections
and grounds of rejection are provided in the Pre-Interview Communication
and the First Action Interview Office Action, applicant has sufficient
notice of the requirements, objections and grounds of rejection. To avoid
abandonment of the application, applicant must, within one month or thirty
days, whichever is longer, from the mailing or notification date of the
First Action Interview Office Action, file a reply in compliance with 37
CFR 1.111(b)-(c). This time period for reply is extendable under 37 CFR
1.136(a) for only one additional month.
3. An agreement as to allowability is not reached and applicant wishes
to convert the previously submitted proposed amendment into a reply under
37 CFR 1.111(b) and waive receipt of a First Action Interview Office
Action.
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Under the Full First Action Interview Pilot Program, the Office is
permitting applicants to request the Office to enter the previously filed
proposed amendment and/or arguments as a reply under 37 CFR 1.111 to
address every rejection, objection and requirement set forth in the
Pre-Interview Communication, waiving a First Action Interview Office
Action, if the proposed amendment and/or arguments comply with the
requirements of 37 CFR 1.121 and 37 CFR 1.111(b)-(c). If the examiner
agrees to enter the proposed amendment as the reply under 37 CFR 1.111 to
the Pre-Interview Communication, the examiner must annotate the proposed
amendment (e.g., "OK to enter") on the first page of the proposed
amendment, and provide a statement in the Interview Summary (e.g.,
"Applicant requested to enter the proposed amendment as a reply under 37
CFR 1.111 to the Pre-Interview Communication, waiving the First Action
Interview Office Action"). Applicant cannot file any additional amendment
and/or arguments until the mailing or notification of the next Office
action.
In this situation, a First Action Interview Office Action will not be
provided to the applicant. The Pre-Interview Communication and the
interview will be deemed the first Office action on the merits. The
examiner will enter the proposed amendment and/or arguments, consider it
as the reply under 37 CFR 1.111, and provide an Office action in response
to the reply. The Office action will be the second Office action on the
merits, and thus it could be a final Office action, a notice of
allowability, or other appropriate action.
C. 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.
IX. Forms
A. Forms for Applicants to Use:
1. Request for First Action Interview Pilot Program (PTO/SB/413C); and
2. Applicant Initiated Interview Request Form (PTOL-413A).
B. Forms for USPTO Personnel to Use:
1. Notice of Non-Compliant First Action Interview Request (PTOL-413NC);
2. Pre-Interview Communication (PTOL-413FP);
3. Notice of References Cited (PTO-892);
4. First Action Interview Office Action (PTOL-413FA);
5. Interview Summary (PTOL-413);
6. Notice of Allowability (PTOL-37); and
7. Notice of Allowance and Fees Due (PTOL-85).
X. Contact Information: 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, Legal Advisor, Office of Patent Legal
Administration (by phone (571) 272-7759, or e-mailed to
PatentPractice@USPTO.gov). Any inquiries regarding this pilot program can
be e-mailed to first.action.interview@uspto.gov.
May 5, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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1 See the Requirements section of this notice for more information on other
requirements for the pilot program.
2 The mailing or notification date is indicated on the form PTOL-90 a
ccompanying the Office communication. For those applicants that are
participating in the Electronic Office Action Program (e-Office Action),
the Office communication will not be mailed, rather an e-mail notification
will be sent to the applicants who will retrieve the communication through
Private Patent Application Information Retrieval (PAIR).
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