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Wednesday Dec 23, 2020

Interview practice and its importance at the USPTO

First Action Interview Pilot Program to end on January 15, 2021

Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Drew Hirshfeld, Commissioner for Patents

virtual interview

Virtual interview between a patent attorney and a patent examiner

Whether initiated by the applicant or the examiner, interviews during patent prosecution provide an opportunity for the participants to discuss the merits of an application and gain insights that are sometimes not apparent through written exchanges. Examiners are available for telephonic or video interviews, with video interviews gaining in popularity. The USPTO’s improved information technology infrastructure is now permitting high-quality virtual interactions that far exceed past experiences.

Interviews can lead to a better understanding of an applicant’s invention, bridge gaps between the examiner and applicant, and serve as an effective mechanism for facilitating agreement and furthering prosecution. Recent data shows that applications with at least one interview had an allowance rate 10% higher than those with no interview, demonstrating that interviews are an effective tool to place claims in a condition for allowance. This statistic is especially meaningful, as interviews most commonly occur when rejections or objections are pending and the path to allowability is not immediately clear.  

As a result of the USPTO’s efforts to promote interview practice at all stages of prosecution, the percentage of applications having at least one interview is now at an all-time high, having risen from 19.6% at the beginning of FY 2010 to 38.1% at the end of FY 2020. To maintain steady progress in this area, we are constantly monitoring and refining our programs. Over time, the USPTO has introduced a number of successful enhancements to facilitate interviews, including: Automated Interview Requests, a convenient web-based method to request an interview; Technology Center Interview Specialists, subject matter experts on interview practice and policy; video conference interviews, allowing an examiner and an applicant to interact in real time from anywhere using video and document sharing; and public interview rooms, available at each USPTO office (when our physical premises reopen). 

On the other hand, the Full First Action Interview Pilot Program has not been as successful. The program couples an interview before a first office action on the merits at the request of the applicant with modified prosecution procedures. During the 12 years of the program’s existence, it has been used for only approximately 0.2% of eligible applications. Due to its limited use, the program will be discontinued effective January 15, 2021. This will allow us to concentrate on more effective actions.

We look forward to continued engagement with our stakeholders not only through general interview practice, but also through Patents Customer Partnership Meetings, the Patent Examiner Technical Training Program, and other programs designed to provide unique and invaluable opportunities to communicate, collaborate, and cooperate. If you have ideas to improve our interview process, please contact us at ExaminerInterviewPractice@USPTO.gov.

graph showing increase in interviews

Comments:

This post is very informative and I couldn't agree more: the interview is absolutely essential to examination and likely allowance. However, I think to make the interview more meaningful and relevant to request the applicant's agenda ahead of time where the examiner can set aside time to review the agenda against the last action written against the application. Preferably, the agenda should be emailed to the examiner (which, I believe, is now standard and authorized per USPTO rules and regulations). In addressing the concerns the applicant may have laid out in the agenda, the examiner should provide an email follow up with relevant responses to the applicant's agenda (time allowing). In that way, discussion on the agenda topic at hand can be abbreviated or addressed with more relevance and detail where, upon the day of the interview, both parties can immediately engage into the crux of the matter.

Posted by Cal Eustaquio on December 23, 2020 at 12:22 PM EST #

It would be of interest to see if interviews help pro se applicants or hurt them. I would guess large corporations don't use interviews. Thanks for the information

Posted by stan sansone on December 23, 2020 at 01:01 PM EST #

I think that removing this program is likely a mistake. For .2% of the cases, it has likely been beneficial, with little if any tax on the resources of the US Patent and Trademark Office. Perhaps the program can be tweaked to give longer periods of reply and/or ease the burden on the Examiner and Applicant prior to the first Office Action. Anything that can get the Examiner and Applicant talking early is likely good and this program was a reasonable attempt at that. Thank you in advance for considering these comments.

Posted by David Lewis on December 23, 2020 at 03:39 PM EST #

The USPTO is doing many things right these days, so it surprised me to see this announcement. While the FAI program is not often used, it is undeniably a success for applicants. The first action allowance rate for FAI cases is reported to be around 35% and overall allowance rates are also higher than average. My clients will be disappointed. I hope there are plans to replace FAI with a new program that promotes interviews before the issuance of the first office action.

Posted by Mark Alleman on December 28, 2020 at 06:17 PM EST #

I am disappointed to see the First Action Interview program gone. Many examiners were not closely familiar with the program. In cases where examiners embraced it, the program worked very well. When working with national phase entry applications I often find that a 5-minute phone call with the foreign attorney who drafted the application dramatically reduces the time I spent to understand the invention. The same is likely true for examiners. Why wait until after a first office action to have a conversation what the invention is really about?

Posted by Axel Nix on January 05, 2021 at 03:17 PM EST #

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