(279) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2015-0027]
United States Patent and Trademark Office and Japan Patent 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 Japan Patent Office
(JPO) to study whether the exchange of search results 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 conduct a prior art search for its
corresponding counterpart application and exchange the search results with
the other office before either office issues a communication concerning
patentability to the applicant. As a result of this exchange of search
results, the examiners in both offices may have a more comprehensive set of
references before them when making their initial patentability
determinations. 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 search results of record in the form of a Pre-Interview
Communication.
DATES: Effective date: August 1, 2015.
Duration: Under the United States-Japan Collaborative Pilot (US-JP CSP)
program, the USPTO and JPO will accept petitions to participate for two
years from its effective date. During each year, the pilot program will be
limited to 400 granted petitions, 200 granted petitions where USPTO
performs the first search and JPO performs the second search, and 200
granted petitions where JPO performs the first search and USPTO performs
the second search. The offices may extend the pilot program (with or
without modification) for an additional amount of time, if necessary. The
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 JPO will cooperate in a study to
determine whether work sharing between IP offices by exchanging search
results, where one office will have the benefit of the other office's
search results before conducting a search, increases the efficiency and
quality of patent examination. This exchange of search results 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
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in patentability determinations (not predicated upon differences in
national patent laws) between IP offices 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 the applicant during the U.S.
application's pendency. After review of the search report and cited art,
the 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 results may increase
efficiency and promote patent examination quality by providing the examiner
with both offices' search results when examination commences. In order to
study the benefits of the exchange of search results 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 results 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-JP 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 the JPO at
different stages of prosecution as set forth in this notice.
The USPTO also is initiating a joint Work Sharing Pilot Program with the
Korean Intellectual Property Office (KIPO). The JPO and KIPO pilot programs
are different in the way that they operate. Thus, while there may be
applications that are eligible for both 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-JP 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 via EFS-Web a Petition to Make Special using form PTO/SB/437JP in
a published U.S. application. Use of the form will assist an applicant in
complying with the pilot program's requirements. Form PTO/SB/437JP is
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available at: http://www.uspto.gov/patents-getting-started/international-
protection/collaborative-search-pilot-program-csp. 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/437JP.
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.
The offices will search the corresponding counterpart applications
participating in the pilot program sequentially. The office of first search
will be set based upon which participating counterpart application, the JPO
or the U.S. application, has the earlier filing date. In the event that
corresponding counterpart applications were filed on the same day, then the
office of first search will be determined as agreed to by the offices. 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 this pilot
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 Notice of Allowability but will not maintain special status
thereafter. While JPO and USPTO will be sharing search results, 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 JPO counterpart application. Participants in the US-JP CSP
program should review the references cited in each office's communication.
If any JPO 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 JPO
communication along with copies of the newly cited references in accordance
with 37 CFR 1.98 and MPEP § 609.04(a)-(b). See also MPEP §§ 609 and
2001.06(a).
III. Requirements for Participation in the US-JP CSP Program
The following requirements must be satisfied for a petition under the
US-JP CSP program to be granted:
(1) The application must be a published, 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 no earlier than March 16,
2013. The U.S. application and the corresponding JPO counterpart
application must have a common earliest priority date that is no earlier
than March 16, 2013.
(2) A completed petition form PTO/SB/437JP must be filed in the
application via EFS-Web after the U.S. application has published. Form
PTO/SB/437JP is available at: http://www.uspto.gov/patents-getting-started/
international-protection/collaborative-search-pilot-program-csp. An
applicant may request early publication in accordance with 37 CFR 1.219 to
expedite the filing of the petition.
(3) The petition submission must include an express written consent
under 35 U.S.C. 122(c) for the USPTO to receive prior art references and
comments from the JPO that will be considered during the examination of the
U.S. application participating in the US-JP CSP Program. Form PTO/SB/437JP
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
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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 JPO
counterpart application for the US-JPO CSP program must be granted or have
been granted by JPO. The USPTO and JPO petitions should be filed within
fifteen days of each other. Both the JPO and the USPTO petitions must be
granted before either application can be treated under the US-JP CSP
program. As the requirements of each office's pilot programs 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 independent claims between the pending U.S. and JPO
applications have a substantially corresponding scope to each other.
Claims are considered to have "substantially corresponding scope" where,
after accounting for differences due to claim format requirements, the
scope of the corresponding independent claims in the corresponding
counterpart applications 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 JPO
counterpart application(s) are not considered to substantially correspond.
For example, where a corresponding JPO 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
each corresponding 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 must 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 to ensure the same invention is
elected in both the U.S. and JPO corresponding counterpart applications for
concurrent treatment in the US-JP CSP program.
(9) All submissions for the participating application while being
treated under the US-JP CSP program's examination 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 claims 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-JP Collaborative
Search Pilot Program (Form PTO/SB/437JP)
An applicant must file a Petition to Make Special using Form PTO/
SB/437JP in an eligible U.S. application for entry into the US-JP CSP
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program after the application has published. An applicant may request
early publication in accordance with 37 CFR 1.219 to expedite the filing of
the petition. An applicant also must file the appropriate petition paper in
the corresponding JPO counterpart application for participation in the
US-JP CSP program. Once both petitions are granted, the corresponding U.S.
counterpart application will receive expedited processing by being placed
on the examiner's special docket for examination in accordance with
sections V-IX of this notice.
A. Petition Decision Making: An applicant must file appropriate petition
papers in the USPTO and JPO 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 decisions
granting the petitions have issued, 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 decision granting the petition issues,
and before issuance of a 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/437JP, or if an application accompanied by Form PTO/SB/437JP 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 the applicant still wishes to participate in the US-JP CSP 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 does not timely file a response to the dismissal decision or
timely files a response that fails to correct all of the noted
deficiencies, the petition will be denied. In both cases, USPTO will notify
JPO of the denial and then both offices will issue a denial decision in
each application, resulting in neither application participating in the
pilot program. The U.S. application will then be examined 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 the applicant
timely files a response to the dismissal decision correcting all noted
deficiencies and does not introduce new deficiencies, 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 the petition being
granted 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 VIII.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 § 812.01 will be followed. An applicant must make an
election without traverse during the telephonic interview in accordance
with the procedures outlined in sections V.A. or V.B. of this notice. When
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a telephonic election is made, the examiner will provide a complete record
of the telephone interview, including the restriction or lack of unity
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 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 JPO
corresponding counterpart applications for concurrent treatment in the
US-JP CSP program.
A. USPTO Office of First Search: If the USPTO determines a restriction
is required, applicant must make an election without traverse during the
telephonic interview in response to a restriction or lack of unity
requirement. 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. The examiner will record the circumstances for the
constructive election in the next Office communication (Pre-Interview
Communication or Notice of Allowability). If the restriction requirement
claim groups have substantially corresponding scope to different
corresponding JPO counterpart applications, upon election of one group
without traverse, an applicant may file a divisional U.S. application(s)
and may separately petition to have the divisional U.S. application(s)
participate in the pilot program. An applicant must include the decisions
granting the petition from both the parent U.S. application and from the
divisional application's corresponding JPO counterpart application, to
expedite decision making for the corresponding U.S. counterpart divisional
application.
B. USPTO Office of Second Search: If the USPTO is the office of second
search, then a restriction or lack of unity requirement determination by
the examiner will first take into consideration whether only one of the
restriction claim groups has a substantially corresponding scope to the
corresponding JPO counterpart application that was already searched. If so,
then the USPTO will designate that group as elected without traverse for
treatment in accordance with this notice. If more than one of the
restricted claim groups was searched in the corresponding JPO counterpart
applications, the examiner will attempt to contact the applicant for a
telephonic interview in order to provide for the opportunity to elect a
claim group without traverse. If 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 of the U.S. application that was searched in the
counterpart JPO application as constructively elected without traverse. If
the other restriction requirement groups have substantially corresponding
scope to other different corresponding JPO counterpart applications, the
applicant may file corresponding U.S. counterpart divisional applications
and may separately petition to have the divisional U.S. applications
participate in the pilot program. The applicant must include the decision
granting the petition from the parent application and from the U.S.
divisional application's corresponding JPO counterpart application, if any,
to expedite decision making for the corresponding U.S. counterpart
divisional application.
VI. Searching
The offices will search the corresponding counterpart applications
participating in the pilot program sequentially. The office of first
search will be set based upon which participating counterpart application
(JPO or U.S.) has the earlier filing date. In the event that both
corresponding counterpart applications were filed on the same day, then the
office of first search will be determined as agreed to by the offices.
A. USPTO Office of First Search: If the USPTO is the office of first
search, the JPO will place a hold on the corresponding JPO counterpart
application to await the USPTO initial search results. The corresponding
U.S. counterpart application will be docketed to the USPTO examiner in
accordance with USPTO procedures for this program. The USPTO examiner will
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review the application, perform a prior art search, and communicate the
initial search results to the JPO. Upon receipt of the USPTO initial search
results, the JPO will remove the docket hold, and the JPO examiner will
perform a prior art search of the corresponding JPO counterpart
application. The JPO will then forward the search results to the USPTO. The
USPTO will then issue a communication in accordance with section VII of
this notice.
B. JPO Office of First Search: If the JPO is the office of first search,
the USPTO will place a hold on the corresponding U.S. counterpart
application to await the JPO initial search results. The corresponding JPO
counterpart application will be docketed to the JPO examiner in accordance
with JPO procedures for this pilot program. The JPO examiner will review
the application, perform an evaluation and prior art search, and
communicate the initial search results to the USPTO. Upon receipt of the
JPO initial search results, the USPTO will remove the docket hold, and the
USPTO examiner will review the application and perform a prior art search
of the corresponding U.S. counterpart application. The USPTO will then
forward the search results to the JPO and issue a communication to
applicant in accordance with section VII of this notice.
C. Exceeding Maximum Search Results Exchange Hold: If the search results
have not been exchanged within 90 days of the mailing date of the decision
granting participation in the program, then each office will independently
issue search results to the applicant without the search results from the
other office. The USPTO will issue the search results in either a Notice of
Allowability or a Pre-Interview Communication as set forth in Section VII
of this notice, noting that JPO search results are not included. The Notice
of Allowability or Pre-Interview Communication also will note that the
corresponding counterpart applications are being removed from the pilot
program for evaluation purposes only, and that the corresponding U.S.
counterpart application will continue to be treated in accordance with the
FAI pilot program procedures, if necessary.
VII. Post Search Exchange Communication
Once all search results are received by the examiner and considered,
then either a Notice of Allowability or a Pre-Interview Communication may
issue.
A. Notice of Allowability: If the examiner, after considering both sets
of search results, 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, then the
examiner may allow the application. The examiner may issue a notice of
allowability, or contact the applicant to conduct an interview in
accordance with MPEP § 713 to discuss any possible amendments or
submissions to place the application in condition for allowance. The USPTO
will notify JPO of the examiner's determination of allowability to include
all findings and references identified in the notice of allowance. The
examiner will cite references from the JPO search results in a Notice of
References Cited form PTO-892 when the Notice of Allowability is issued to
applicant. The Notice of Allowability with a completed Notice of References
Cited form PTO-892 also will be forwarded to JPO for further consideration
by the JPO examiner of record for the corresponding JPO counterpart
application.
B. Pre-Interview Communication: If the examiner, after considering both
sets of search results, determines that the application is not in condition
for allowance, then the examiner will prepare and issue a Pre-Interview
Communication (PTOL-413FP) and a Notice of References Cited (PTO-892)
citing the prior art references, identifying any rejections or objections,
and any designation of allowable subject matter. The examiner will cite
references from the JPO search results in a Notice of References Cited form
PTO-892 when the Pre-Interview Communication is issued to applicant. The
Pre-Interview Communication with a completed Notice of References Cited
form PTO-892 will also be forwarded to JPO for further consideration by the
JPO examiner of record for the corresponding JPO counterpart application.
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
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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 VIII of this
notice. The USPTO will permit an applicant to extend this time period for
reply pursuant to 37 CFR 1.136(a) for one additional month in accordance
with the First Action Interview Program, as set forth in section VIII,
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.
VIII. 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 any part of 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 as set forth in section
VIII, subsection B(2), or section IX, subsection B(3), of this notice. This
is because the examiner has already 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 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; 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, 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. 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 § 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 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 has been granted (one day
before it appears in PAIR), withdrawal from the 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 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
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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, 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, an
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 VIII; subsection C (Failure to
Respond to Pre-Interview Communication) of this notice. The interview may
be in person, telephonic, or a video-conference. An applicant must provide
written authorization to conduct any Internet email 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 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 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 §§ 713.01 III and 713.04; see also MPEP §§ 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. 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
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1481 CNOG 1642 |
is encouraged, as it may assist in the resolution of outstanding rejections
and/or objections.
C. Failure to Respond to Pre-Interview Communication: 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 to the Pre-Interview
Communication is issuance of a First Action Interview Office Action without
the benefit of an interview.
IX. 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 as of the effective
filing date of the claimed invention, including the prior art references
cited by both applicant and 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.
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
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, 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 also will be forwarded to JPO for consideration by the JPO
examiner of record for the corresponding JPO 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 will also 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 an in-person
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, an 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
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1481 CNOG 1643 |
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 JPO for consideration by the JPO examiner of record
for the corresponding JPO 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
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 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 § 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 68]