Top of Notices Top of Notices   (112)  December 25, 2012 US PATENT AND TRADEMARK OFFICE Print This Notice 1385 CNOG  592 

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(112)                       DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                          [Docket No. PTO-P-2012-0025]

        Extension of the Full First Action Interview Pilot Program and
                             Request for Comments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice and request for comments.

SUMMARY: The United States Patent and Trademark Office (Office) is
extending the First Action Interview (FAI) Pilot Program while
completing a comprehensive review of the program, deciding what, if
any, adjustments should be made to the program, and whether the program
should be extended further or made permanent. The program is intended
to expedite disposition of an application by enhancing communication
between an applicant and an examiner at the beginning of the
examination process. Specifically, the program allows an applicant to
conduct an interview with an examiner prior to the issuance of an
Office action, but after receiving the examiner's search results and
initially identified issues. During its review, the Office will
consider feedback from both internal and external stakeholders.
Accordingly, in addition to announcing the extension of the program,
the Office is requesting comments on the program.

DATES: Comment Deadline Date: Written comments must be received on or
before August 8, 2012. No public hearing will be held.
   Extension Date: The Office has extended the FAI Pilot Program until
August 16, 2012. Notice of this extension was placed on the USPTO's Web
site just after expiration of the prior extension.

ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: Comments may
also be submitted by postal mail addressed to: United States Patent and
Trademark Office, Mail Stop Comments - Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Joseph F. Weiss, Jr. Although comments may be submitted by
postal mail, the Office prefers to receive comments by electronic mail
message over the Internet in order to facilitate posting on the
Office's Internet Web site.
   The comments will be available for public inspection at the Office
of the Commissioner for Patents, located at Madison Building East,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
( Because comments will be made available for
public inspection, information that is not desired to be made public,
such as an address or phone number should not be included in the

FOR FURTHER INFORMATION CONTACT: Joseph F. Weiss, Jr., Legal Advisor
(telephone (571) 272-7759; email, of the Office
of the Deputy Commissioner for Patent Examination Policy.
Alternatively, mail may be addressed to Mr. Weiss at Commissioner for
Patents, Attn.: FFAIPP, P.O. Box 1450, Alexandria, VA, 22313-1450.


   Background: The Office published a notice implementing the Full FAI
Pilot Program in 2011, which expanded the eligibility criteria to all
utility applications of the previous Enhanced FAI Pilot Program. See
Full First Action Interview Pilot Program, 1367 Off. Gaz. Pat. Office
42 (June 7, 2011). See also Enhanced First Action Interview Pilot
Program, 1347 Off. Gaz. Pat. Office 173 (October 20, 2009). Under the
program, participants are permitted to conduct an interview with the
Top of Notices Top of Notices   (112)  December 25, 2012 US PATENT AND TRADEMARK OFFICE 1385 CNOG  593 

examiner after reviewing a Pre-Interview Communication providing the
results of a prior art search conducted by the examiner.
   Since the date the pilot was expanded, the Office has received over
2,100 requests to participate in the program. Of the applications that
have been taken up for examination since the expansion, the Office has
allowed over 35% on first action. Participants in the program have
experienced several benefits including: (1) Effectively advancing
prosecution of an application before issuance of an Office action;
(2) enhanced interaction between the applicant and the examiner
before issuance of an Office action; (3) resolving patentability issues
one-on-one with the examiner at the beginning of the prosecution
process, rather than after a first Office action; and (4) expedited
allowance of an application, relative to standard examination, due to
the program's enhanced communication and shorter time periods for

   Extension: The Office is extending the FAI Pilot Program until
August 16, 2012, while it completes its evaluation of the program.
During this time, the Office will be gathering and analyzing relevant
information, including comments from external and internal participants
in order to determine what, if any, adjustments should be made to the
program and whether the program will become permanent or be further

   Request for Comments: The Office is seeking comments on the FAI
Pilot Program. The Office is interested in receiving feedback as to
whether the program is meeting the needs of its applicants, and whether
any aspects of the program cause applicants to not participate. The
following questions have been provided to help elicit the types of
information the Office is interested in receiving. However, the list of
questions below is not exhaustive and responses do not need to be
limited to only information that answers these questions.

   (1) Based on your use of the program, did you experience the
benefits of the FAI program set out above? Did you experience
additional benefits?
   (2) Did the Pre-Interview Communication provide you with
sufficient, meaningful information to conduct an effective interview?
   (3) How productive is the interview before first action in
advancing prosecution?
   (4) How would you rate the extent/utility of the information
provided in the Pre-Interview Communication and subsequent Office
   (5) What changes would you make to the FAI program? How would these
changes improve the program?
   (6) For any application in which you decided that the FAI program
would not meet your needs, what aspect of the program made the program
unsuitable for the application?
   (7) Do you consider the FAI program to be more efficient (or
otherwise beneficial) as compared to traditional prosecution?
   (8) Should the Office make the FAI program permanent?

June 29, 2012                                               DAVID J. KAPPOS
                  Under Secretary of Commerce for Intellectual Property and
                  Director of the United States Patent and Trademark Office

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