The United States Patent and Trademark Office (USPTO) is initiating a pilot program in which the applicant who complies with certain requirements will receive the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then be permitted to conduct an interview with the examiner to discuss the cited prior art references prior to the first Office action on the merits. The requirements for the pilot program are set forth in the notice entitled "First Action Interview Pilot Program" (available below). An interview under this pilot program would advance prosecution of the application because it would enhance the interactions between the applicant and the examiner, provide applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process, and facilitate possible early allowance. Currently, granting an interview before first action on the merits of a new application is within the discretion of the examiner, who has not yet searched the case, and a showing may be required to justify the granting of the interview. See MPEP § 713.02. The pilot program provides a procedure which, if followed, makes the granting of an interview non-discretionary.
The effective date for this change in practice is: 28 April 2008
The window for submitting requests to participate in the First Action Interview Pilot Program has closed. All eligible applications containing a timely submitted request will still be treated under the First Action Interview Pilot Program's procedure. Feedback from applicants participating in the program will be utilized to determine whether the program will be expanded and, if expanded, the program's future form. Thank you for your interest and participation in the program.
New utility applications that fall within either Group I or Group II as outlined below may be eligible for the First Office Action Interview Pilot Program:
(1) Filed on or before September 1, 2005, and prior to a first action on the merits;
(2) Classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring); and
(3) Assigned to an art unit in either working group 2140 (group art unit 214x) or 2150 (group art unit 215x).
(1) Filed on or before November 1, 2006, and prior to a first action on the merits;
(2) Classified in Class 707 (Data Processing: Database and File Management or Data Structures); and
(3) Assigned to an art unit in working group 2160 (group art unit 216x).
Applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system. Please see the First-Action Interview Pilot Program Notice for further details.
The request to enter the Pilot Program must be made via EFS-Web which can be accessed at: http://www.uspto.gov/ebc/index.html
EFS-Web requires an applicant to be a REGISTERED eFILER. Registered eFILERs must have an assigned Customer Number and Digital Certificate. Obtaining a Customer Number and Digital Certificate can be initiated at: http://www.uspto.gov/ebc/portal/register.htm
Tips to Consider When Preparing for Interview
- RE: EFS-Web or PAIR system - contact the Electronic Business Center at 866-217-9197.
- RE: a specific application - contact John Follansbee at (571) 272-3964.
- RE: the First-Action Interview Pilot Program Notice - contact Joseph Weiss ((571) 272-7759), Legal Advisor, Office of Patent Legal Administration, or e-mail email@example.com.