August's advice article
Providing Inventors More Communication and Efficiency
The USPTO’s Enhanced First Action Interview (EFAI) Pilot Program has proven successful, and the agency has now launched the Full FAI Pilot Program (FFAI). This version of the pilot expands eligibility to all utility applications in all technology areas. The window for filing a request to participate in the FFAI pilot will be open until May 16, 2012.
Requests must be filed using the USPTO’s electronic filing system and can be done by using form PTO-SB-413C.
Under the Full First Action Interview Pilot Program, an applicant is entitled to request a first action interview prior to the first office action on the merits. The examiner will conduct a prior art search and provide the applicant with a pre-interview communication. It will cite relevant prior art and identify proposed rejections or objections. Within 30 days of the receipt, the applicant should schedule an interview and submit proposed amendments and or arguments. At the interview, the relevant prior art, proposed rejections, amendments and arguments will be discussed.
If agreement is not reached, the applicant will receive a first interview office action that includes an interview summary. This constitutes a first office action on the merits under 35 USC 132. If, after a discussion of patentability of the claims, an agreement is reached between the examiner and inventor about the claims, a notice of allowability will be issued following the interview.
The First Office Action Interview Program promotes up-front communication between inventors and examiners regarding the relevant issues of patentability occurring before the first action. It assures that issues can be more effectively resolved before prosecution enters a final stage where amendments to an application are more restricted. By opening up lines of communication between the examiner and inventor in an up front proactive manner, both parties are able to better appreciate each other’s positions. They can then act more effectively to identify, focus and resolve issues of patentability which improves the efficiency of prosecution and application disposition.
From the perspective of the examiner, a better understanding of the claimed invention is obtained. From the perspective of the inventor, the opportunity to resolve patentability issues one-on-one with the examiner early in the prosecution process is obtained.
The pilot also gives inventors the ability to influence the advancement of their application once it is taken up for examination through the first action interview process. The pilot does not, however, advance applications out of turn. The MPEP § 708 outlines office policy regarding the order that applications are examined based upon application effective filing dates.
For a typical application, under regular examination practice, the allowance rate prior to the first office action on the merits is approximately 11 percent. For cases under the previous version of the FAI pilots, an average allowance rate prior to first action was 22 percent—a large increase over regular examination.
For FAI Pilot Program legal inquiries, please contact Joseph Weiss at 571-272-7759 firstname.lastname@example.org.
Technology Center points of contact for specific case/technology FAI Pilot Program questions
Tech Center 1600 – Johann Richter 571-272-0646 or email@example.com
Tech Center 1700 – Patrick Ryan 571-272-1292 or firstname.lastname@example.org
Tech Center 2100 – James Trujillo 571-272-3677 or email@example.com
Tech Center 2400 – John Follansbee 571-272-3964 or firstname.lastname@example.org
Tech Center 2600 – Nick Corsaro 571-272-7876 or email@example.com
Tech Center 2800 – Darren Schuberg 571-272- 2044 or firstname.lastname@example.org
Tech Center 3600 – Vic Batson 571-272- 6987 or email@example.com
Tech Center 3700 – Linda Dvorak – 571-272-4764 or firstname.lastname@example.org