(245) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2015-0026]
United States Patent and Trademark Office and
Korean Intellectual Property Office
Collaborative Search Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
initiating a joint Work Sharing Pilot Program with the Korean
Intellectual Patent Office (KIPO) to study whether the exchange of
search reports between offices for corresponding counterpart
applications improves patent quality and facilitates the examination of
patent applications in both offices. In the pilot program, each office will
concurrently conduct a prior art search for its corresponding counterpart
application. The search report from each office will then be exchanged
between offices before either office issues a communication concerning
patentability to the applicant. As a result of this exchange of search
reports, the examiners in both offices may have a more comprehensive set of
references before them when making an initial patentability determination.
Each office will accord special status to its counterpart application to
first action. First Action Interview (FAI) pilot program procedures will be
applied during the examination of the U.S. application and make the Korean
search report of record concurrently with the issuance of a Pre-Interview
Communication.
DATES: Effective Date: September 1, 2015.
Duration: Under the United States-Korean Collaboration Pilot (US-KR CSP)
program, the USPTO and KIPO will accept petitions to participate for two
years from its effective date. During the pilot program, each office will
be limited to granting 400 petitions. The offices may extend the pilot
program (with or without modification) for an additional amount of time, if
necessary. Both offices reserve the right to terminate the pilot program at
any time.
FOR FURTHER INFORMATION CONTACT: Daniel Hunter, Director of International
Work Sharing, Planning, and Implementation, Office of International Patent
Cooperation, by telephone at 571-272-8050 regarding the handling of any
specific application participating in the pilot. Any questions concerning
this notice may be directed to Joseph Weiss, Senior Legal Advisor, Office
of Patent Legal Administration, by phone (571) 272-7759. Any inquiries
regarding this pilot program can be emailed to csp@uspto.gov.
SUPPLEMENTARY INFORMATION:
I. Background
The USPTO is continually looking for ways to improve the quality of
issued patents and to promote work sharing between other Intellectual
Property (IP) Offices throughout the world. The USPTO has launched several
work sharing pilot programs in recent years (e.g., numerous Patent
Prosecution Highway Pilot Programs). In furtherance of promoting
interoffice work sharing, the USPTO and KIPO will cooperate in a study to
determine whether work sharing between IP offices, in the form of
exchanging the results from independently performed concurrent searches,
increases the efficiency and quality of patent examination. This exchange
of search reports would occur prior to making determinations regarding
patentability. Work sharing benefits applicants by promoting compact
prosecution, reducing pendency, and supporting patent quality by reducing
the likelihood of inconsistencies in patentability determinations (not
predicated upon differences in national patent laws) between IP offices
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when considering corresponding counterpart applications.
Currently, an application filed in the USPTO with a claim of foreign
priority may have a search report and art cited by the foreign office in
the priority application provided to applicant during the U.S.
application's pendency. After review of the search report and cited art, an
applicant may submit an Information Disclosure Statement (IDS) in the U.S.
application to provide the information to the USPTO. Often this submission
occurs after examination on the merits is already underway in the U.S.
application. Upon evaluation of the search report and cited art, the U.S.
examiner may determine that the art cited by the foreign office is relevant
to patentability and merits further examination before making a final
determination on patentability. The delay caused by further examination
results in additional costs to an applicant and the USPTO that could have
been avoided if the U.S. examiner was in possession of the foreign office's
search results before commencing examination of the application.
Furthermore, in light of the various expedited examination programs
currently in place, the potential exists that a U.S. application may reach
final disposition before an applicant is in receipt of a foreign office's
search report. Work sharing between intellectual Property (IP) offices in
the form of an exchange of search reports may increase efficiency and
promote patent examination quality by providing the examiner with both
offices' search reports when examination commences. In order to study the
benefits of the exchange of search reports between offices, current USPTO
examination practice would need to be modified to conduct a search and
generate a search report, without issuance of an Office action. The U.S.
application also would need to be "made special" pursuant to USPTO
procedures to ensure that it could be contemporaneously searched with its
corresponding counterpart application.
The USPTO is using the First Action Interview Pilot Program (FAI) in
this search report work sharing pilot program because its procedure
bifurcates the determination and evaluation of a prior art search from the
notice of rejection. See Full First Action Interview Pilot Program,
1367 Off. Gaz. Pat. Office 42 (June 7, 2011). Under the FAI pilot program,
participants receive a Pre-Interview Communication providing the results of
a prior art search conducted by the examiner. Participants then have three
options: (1) File a request not to conduct a first action interview;
(2) submit a reply under 37 CFR 1.111 after reviewing the Pre-Interview
Communication; or (3) conduct an interview with the examiner. Participants
in the FAI pilot program experience 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.
The US-KR CSP program differs from the FAI pilot program procedure by
requiring a Petition to Make Special for the participating application,
and providing for the exchange of information with KIPO at different stages
of prosecution as set forth in this notice.
The USPTO also is initiating a joint Work Sharing Pilot Program with the
Japan Patent Office (JPO). The KIPO and JPO pilot programs are different in
the way that they operate. Thus, while there may be applications that are
eligible for both work sharing pilot programs, such applications will not
be permitted to participate in both pilot programs due to the differences
in work sharing procedures of these two different programs. More
information about the US-KR CSP program can be found on the USPTO's
Internet Web site at: http://www.uspto.gov/patents-getting-started/
international-protection/collaborative-search-pilot-program-csp.
II. Overview of Pilot Program Structure
An application must meet all of the requirements set forth in section
III of this notice to be accepted into this pilot program. An applicant
must file a Petition to Make Special using form PTO/SB/437KR via EFS-web in
a U.S. application. Use of the form will assist an applicant in complying
with the pilot program's requirements. Form PTO/SB/437KR is available at:
http://www.uspto.gov/patents-getting-started/international-protection/
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collaborative-search-pilot-program-csp. An applicant's use of this form
allows the USPTO to quickly identify participating applications,
facilitates timely processing in accordance with this notice, and
simplifies petition preparation and submission for an applicant. The
collection of information involved in this pilot program has been submitted
to OMB. The collection will be available at the OMB's Information
Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
No fee is required for submission of petitions using Form PTO/SB/437KR.
The fee (currently $140.00) for a petition under 37 CFR 1.102 (other than
those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for
petitions to make special based upon the procedure specified in this
notice.
Each office may reevaluate the workload and resources needed to
administer the pilot program at any time. The USPTO will provide notice of
any substantive changes to the program (including early termination of the
program) at least thirty (30) days prior to implementation of any changes.
New patent applications are normally taken up for examination in
the order of their U.S. filing date. Applications accepted into the US-KR
CSP program will receive expedited processing by being granted special
status and taken out of turn until issuance of a Pre-Interview
Communication, or first action allowance, but will not maintain special
status thereafter. While KIPO and USPTO will be sharing search reports, the
possibility exists that there may be differences in the listing of
references made of record by the USPTO versus those made of record in the
corresponding KIPO counterpart application. Participants in the US-KR CSP
program should review the references cited in each respective office's
search reports. If any KIPO communication to an applicant cites references
that are not already of record in the USPTO application and the applicant
wants the examiner to consider the references, the applicant should
promptly file an Information Disclosure Statement (IDS) that includes a
copy of the KIPO communication along with copies of the newly cited
references in accordance with 37 CFR 1.98 and MPEP section 609.04(a)-(b).
See also MPEP sections 609 and 2001.06(a).
III. Requirements for Participation in the Pilot Program
The following requirements must be satisfied for a petition under the
US-KR CSP Program to be granted:
(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),
with an effective filing date of no earlier than March 16, 2013. The U.S.
application and the corresponding KIPO counterpart application must have a
common earliest priority date that is no earlier than March 16, 2013.
(2) A completed petition form PTO/SB/437KR must be filed in the
application via EFS-Web. Form PTO/SB/437KR is available at: http://www.
uspto.gov/patents-getting-started/international-protection/collaborative-
search-pilot-program-csp.
(3) The petition submission must include an express written consent
under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art
references and comments from KIPO, during the examination of the U.S.
application participating in the pilot program. The petition also must
provide written authorization for the USPTO to provide KIPO access to the
participating U.S. application's bibliographic data and search reports in
accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form PTO/SB/437KR
includes language compliant with the consent requirements for this pilot
program.
(4) The petition 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). An applicant should check the status
of the application using the PAIR system prior to submitting the petition
to ensure that this requirement is met.
(5) The petition for participation filed in the corresponding KIPO
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counterpart application for the US-KR CSP Program must be grant or have
granted by KIPO. The KIPO and the USPTO petitions should be filed within
fifteen days of each other. Both the KIPO and the USPTO petitions must be
granted for the applications to be treated under the US-KR CSP program. As
the requirements of each office's pilot program may differ, applicants
should review the requirements for both pilot programs when considering
participation, ensuring that the respective corresponding counterpart
applications can comply with each office's requirements.
(6) The petition submission must include a claims correspondence table
that notes which claims between the pending U.S. and KIPO applications
have a substantially corresponding scope to each other. Claims are
considered to have a "substantially corresponding scope" where, after
accounting for differences due to claim format requirements, the scope of
the corresponding claims in the corresponding KIPO counterpart
application would either anticipate or render obvious the subject matter
recited under U.S. law. Additionally, claims in the corresponding U.S.
counterpart application that introduce a new/different category of claims
than those presented in the corresponding KIPO counterpart application are
not considered to substantially correspond. For example, where the
corresponding KIPO counterpart application contains only claims relating to
a process of manufacturing a product, then any product claims in the
corresponding U.S. counterpart application are not considered to
substantially correspond, even if the product claims are dependent on
process claims which substantially correspond to claims in the
corresponding KIPO counterpart application. Applicants may file a
preliminary amendment in compliance with 37 CFR 1.121 to amend the claims
of the corresponding U.S. counterpart application to satisfy this
requirement when attempting to make the U.S. application eligible for the
program.
(7) 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 any 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 to make the application eligible for the program.
(8) 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 a telephonic election
without traverse in accordance with the procedures outlined in section V of
this notice. An applicant is responsible for ensuring that the same
invention is elected in both the U.S. and KIPO corresponding counterpart
applications for concurrent treatment in the US-KR CSP program.
(9) All submissions for the participating application while being
treated under the US-KR CSP program's procedure must be filed via EFS-Web.
(10) The petition 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 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) to obtain a refund of the search fee and
excess claim fee filed after the mailing or notification date of a Pre-
Interview Communication will not be granted.
IV. Decision on Petition To Make Special Under the US-KR Collaborative
Search Pilot Program (Form PTO/SB/437KR)
An applicant must file a Petition to Make Special using Form PTO/
SB/437KR in an eligible U.S. application for entry into the US-KR CSP
program. Applicant also must file the appropriate petition paper in the
corresponding KIPO counterpart application for participation in the US-KR
CSP program. Once both petitions are granted, the U.S. application will
receive expedited processing by being placed on the examiner's special
docket for examination in accordance with sections V-VIII of this notice.
A. Petition Decision Making
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An applicant must file appropriate petition papers in both the USPTO and
KIPO corresponding counterpart applications within fifteen days of each
other. If the petitions are not filed within fifteen days of each other, an
applicant runs the risk of one of the pending applications being acted upon
by an examiner before entry into the pilot program, which will result in
both applications being denied entry into the pilot program. Both offices
must grant the respective petitions in order for the applications to
participate in the pilot program. Once the USPTO issues a decision granting
the petition, an applicant will no longer have a right to file a
preliminary amendment that amends the claims. Any preliminary amendment
filed after petition grant and before issuance of a Pre-Interview
Communication amending the claims will not be entered unless approved by
the examiner. After the petition is granted and before issuance of the Pre-
Interview Communication, an applicant may still submit preliminary
amendments to the specification that do not affect the claims. If either
office determines that the petition must be denied, then the other office
will be informed of the denial determination, and both offices will issue
decisions denying the petition.
B. Petition Dismissal
If an applicant files an incomplete Form PTO/SB/437KR, or if an
application accompanied by Form PTO/SB/437KR does not comply with the
requirements set forth in this notice, the USPTO will notify the applicant
of the deficiency by issuing a dismissal decision and the applicant will be
given a single opportunity to correct the deficiency. If an applicant still
wishes to participate in the pilot program, the applicant must make
appropriate corrections within one month or thirty days of the mailing date
of the dismissal decision, whichever is longer. The time period for reply
is not extendable under 37 CFR 1.136(a). If the applicant fails to correct
all of the noted deficiencies within the time period set forth, the USPTO
will render a denial decision and notify KIPO in accordance with this
notice, and neither application will be eligible for the pilot program. The
U.S. application will then be taken up for examination in accordance with
standard examination procedures, unless designated special in accordance
with another established procedure (e.g., Prioritized Examination, Special
Based on Applicant's Age, etc.). If an applicant timely files a response to
the dismissal that corrects all the noted deficiencies and does not
introduce new instances of non-compliance, the USPTO will issue a decision
granting the petition.
C. Withdrawal of Petition
An application can be withdrawn from the pilot program only by filing a
withdrawal of the petition to participate in the pilot program prior to
issuance of a decision granting the petition. Once the petition for
participation in the pilot program has been granted (one day before it
appears in PAIR), withdrawal from the pilot program is not permitted. The
USPTO will treat any request for withdrawal from the pilot program filed
after the mailing or notification of acceptance into the pilot program as a
request to not conduct an interview, and subsequent to the mailing of the
Pre-Interview Communication, the USPTO will issue a First-Action Interview
Office Action, in due course. (See section VII.B.1. of this notice.)
V. Requirement for Restriction
If the examiner determines that not all the claims presented are
directed to a single invention, the telephone restriction practice set
forth in MPEP section 812.01 will be followed. An applicant must make an
election without traverse during the telephonic interview. If the applicant
refuses to make an election without traverse, or if the examiner cannot
reach the applicant after a reasonable effort (i.e., three business days),
the examiner will treat the first claimed invention (the group of claim 1)
as constructively elected without traverse for examination. When a
telephonic election is made, the examiner will provide a complete record of
the telephone interview, including the restriction or lack of unity
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requirement and the applicant's election, as an attachment to the
Pre-Interview Communication. Applicants are strongly encouraged to ensure
that applications submitted for the pilot program are written such that
they claim a single, independent, and distinct invention. An applicant is
responsible to ensure the same invention is elected in both the U.S. and
KIPO corresponding counterpart applications for concurrent treatment in
this joint office work sharing pilot program.
VI. Pre-Interview Communication
If the application contains only one invention or an applicant has
elected one invention without traverse, the examiner will conduct a prior
art search for the claimed invention under consideration. The examiner may
prepare either a Notice of Allowability or a Pre-Interview Communication.
A. Notice of Allowability
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 Pre-
Interview Communication and all subsequent FAI procedures under this pilot
program will not be necessary. The examiner may allow the application, or
contact the applicant and conduct an interview in accordance with MPEP
section 713 to discuss any possible amendments or submissions to place the
application in condition for allowance. If the USPTO has not received the
KIPO search report at the time the examiner has decided the claims are
allowable, the USPTO will notify KIPO of the examiner's findings and
references identified during the search. The USPTO will wait for up to 90
days from the date of notification for receipt of the KIPO search. Upon
receipt of the KIPO search report, the examiner will consider the
references cited in the KIPO search report before making a final
determination whether to issue a Notice of Allowability. If the KIPO
search report is not received within 90 days, the examiner will issue a
Notice of Allowability without consideration of the KIPO search report. An
applicant will be responsible for determining the appropriateness of any
future correspondence with the USPTO for information later obtained from
KIPO. If the examiner issues a Notice of Allowability with consideration of
the KIPO search report, the examiner will cite references from the KIPO
search report in a Notice of References Cited (PTO-892). The Notice of
Allowability with a completed form PTO-892 also will be forwarded to KIPO
for further consideration by the KIPO examiner of record for the
corresponding KIPO counterpart application. If a Notice of Allowability
will not issue, then the examiner will prepare and issue a Pre-Interview
Communication in accordance with Section VI.B of this notice.
B. Pre-Interview Communication
If the examiner determines the application is not in condition for
allowance, the examiner will prepare a Pre-Interview Communication and a
PTO-892 citing the prior art references, identifying any rejections or
objections relevant to the claimed invention, and any designation of
allowable subject matter. If the USPTO has not received the KIPO search
report at the time the examiner has completed the Pre-Interview
Communication, the USPTO will notify KIPO of the examiner's findings and
references identified during the search. The USPTO will wait for up to 90
days from the date of notification for receipt of the KIPO search. Upon
receipt of the KIPO search report, the examiner will issue a Pre-Interview
Communication and include a copy of the KIPO search report. Thus, the
examiner is not required to cite in the Pre-Interview Communication
references cited in the KIPO search report, because the KIPO search report
is being sent to the applicant with the Pre-Interview Communication. If the
KIPO search report is not received within 90 days, the examiner will issue
the Pre-Interview Communication to the applicant, and the application will
be removed from the pilot program for evaluation purposes only, but will
continue to be treated in accordance with this notice. An applicant is
responsible for responding to the USPTO Pre-Interview Communication in
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accordance with the First Action Interview Program procedures discussed in
Section VII of this notice.
The Pre-Interview Communication issued to an applicant will set forth a
time period of one month or thirty days, whichever is longer, for the
applicant to request or decline an interview. An applicant is responsible
for responding to the Pre-Interview Communication in accordance with the
First Action Interview Program procedures discussed in Section VII of this
notice. The USPTO will permit the applicant to extend this time period for
reply pursuant to 37 CFR 1.136(a) for one additional month as set forth in
section VII, subsection B (Applicant's Options and Reply to Pre-Interview
Communication) and subsection C (Failure to Respond to Pre-Interview
Communication) of this notice. The examiner's typical working schedule also
will be provided with the Pre-Interview Communication to indicate the
examiner's availability for 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,
an 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 sent. Therefore, any amendments filed after the Pre-Interview
Communication, but before the interview and the 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 section
714.01(e). The USPTO may enter the amendment if it is clearly limited to:
Cancellation of claims; adoption of examiner suggestions; placement of the
application in condition for allowance, including an explanation on how the
proposed amendments overcome art cited and/or applied in the KIPO search
report, if necessary, in accordance with U.S. patent laws; 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";
(2) File a reply under 37 CFR 1.111 waiving the first action interview
and First-Action Interview Office Action--an applicant is accepting that
the Pre-Interview Communication is the first Office action on the merits;
or
(3) Schedule the first action interview--an 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 Interview Request.
1. Request To Not Have a First Action Interview
If an applicant wishes not to have the first action interview, the
applicant should electronically file a letter requesting not to have a
first action interview within the time period set forth in the Pre-
Interview Communication. In this situation, a first action interview
will not be conducted, and the examiner will provide the First-Action
Interview Office Action setting forth the requirements, objections, and
rejections relevant to the claimed invention. However, such a request will
not preclude the examiner from contacting the applicant and conducting a
regular interview in accordance with MPEP section 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, an
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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 the petition for entry into the pilot program has been granted (one
day before it appears in PAIR), withdrawal from the pilot program is not
permitted. Therefore, the USPTO will treat a request for withdrawal from
the pilot program filed after the mailing or notification of granting an
applicant's petition to participate in the pilot program as a request to
not conduct an interview, issue a Pre-Interview Communication, and
subsequently 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
Applicants may file, preferably 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, including any issues of patentability raised
by the art cited and/or applied in the KIPO search report, if necessary, in
accordance with U.S. patent laws, 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, an 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
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 an applicant wants a first action interview with the examiner, the
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, the applicant
should select the document description "First Action Interview--Schedule
Interview Request."
An applicant must 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. An 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, the
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) of this notice. The interview
may be in person, telephonic, or a video-conference. The applicant must
provide written authorization to conduct any Internet email
communications with the examiner. See MPEP section 502.03 for more
information.
The proposed amendment or arguments must be clearly labeled as
"PROPOSED" at the header or footer of each page 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
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of right. The proposed amendment or arguments must address every proposed
rejection, objection, and requirement set forth in the Pre-Interview
Communication, including any issues of patentability raised by the art
cited and/or applied in the KIPO search report, if necessary, in accordance
with U.S. patent laws. The examiner, based upon discussions, feedback, and
agreement with an applicant during the interview may at his or her
discretion enter the amendment if found sufficient to advance prosecution
on the merits. See MPEP sections 713.01 III and 713.04; see also MPEP
sections 714 and 1302.04. Even if the examiner denies entry of the proposed
amendment, the proposed amendment will be placed in the application file.
Preparation for the Interview: An applicant must be prepared to fully
discuss the prior art of record, any relevant interview talking points from
the interview talking points posted at http://www.uspto.gov/web/offices/
pac/dapp/opla/preognotice/fai_talking_points.pdf, and any rejections or
objections with the intent to clarify and resolve all issues with respect
to patentability during the interview, including any issues of
patentability raised by the art cited and/or applied in the KIPO search
report, if necessary, in accordance with U.S. patent laws. An applicant
also must be prepared to discuss any proposed amendment or arguments
previously submitted and discuss and resolve any relevant issues that
arise. The interview talking points posted at http://www.uspto.gov/web/
offices/pac/dapp/opla/preognotice/fai_talking_points.pdf represent a
non-exhaustive list of potential topics for discussion in a first action
interview. The talking points are available to the public and the patent
examining corps to assist and facilitate comprehensive and effective first
action interviews.
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
If an 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
to the Pre-Interview Communication 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 section 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 as of the effective
filing date of the claimed invention, including the prior art references
cited by the applicant and the examiner (as only applications subject to
the First Inventor to File provisions of the Leahy-Smith America Invents
Act (AIA) are eligible for this pilot program); and
3. A discussion of the features of the claimed subject matter which make
the invention patentable, including any proposed amendments to the claims.
4. A discussion regarding any issues of patentability raised by the art
cited and/or applied in the KIPO search report, if necessary, in accordance
with U.S. patent laws.
B. Three Possible Outcomes of a First-Action Interview
1. An agreement is reached and all claims are in condition for
allowance. If the applicant and the examiner reach agreement that the
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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
first page of the proposed amendment (e.g., "OK to enter"). In an in-person
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 Allowability and a Notice of
Allowance and Fees Due (PTOL 85). The Notice of Allowability and the Notice
of Allowance, interview summary, and all amendments made of record along
with a completed Notice of References Cited form PTO-892 listing any newly
cited references will also be forwarded to KIPO for consideration by the
KIPO examiner of record for the corresponding KIPO counterpart application.
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 any unresolved, maintained, or new requirements, objections, and
rejections in the First-Action Interview Office Action. The examiner also
will complete an Interview Summary, highlighting the basis for any
unresolved, maintained, or new requirements, objections, and rejections as
well as resolution of any issues that occurred during the interview,
attaching 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 deemed
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, the applicant
has sufficient notice of the requirements, objections, and grounds of
rejection. To avoid abandonment of the application, the applicant must,
within two months or sixty 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 two additional months. The
First-Action Interview Office Action, interview summary and a completed
Notice of References Cited form PTO-892 listing any newly cited references
also will be forwarded to KIPO for consideration by the KIPO examiner of
record for the corresponding KIPO counterpart application.
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. Applicants may request the USPTO 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 first page
of the proposed amendment (e.g., "OK to enter"), 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"). The 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
interview summary and a completed Notice of References Cited form PTO-892
listing any newly cited references, if any, also will be forwarded to KIPO
for consideration by the KIPO examiner of record for the corresponding KIPO
counterpart application. The examiner will enter the proposed amendment
and/or arguments, consider it as the reply under 37 CFR 1.111, and provide
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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 applicant's responsibility to make of record the
substance of an interview, 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 section
713.04.
July 2, 2015 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1417 OG 52]