United States Patent and Trademark Office OG Notices: 27 April 2004

                          Notice of Pilot Program to
                   Permit Pre-First Office Action Interview
               for Applications Assigned to Art Units 3624 and
                3628 and Request for Comments on Pilot Program

   Effective May 3, 2004, a pilot program to provide for an
optional pre-first Office action interview for applications assigned to
Art Units 3624 and 3628 (Class 705/Subclasses 35-45-the finance and
banking art) will be initiated. The pre-first Office action interview
will be granted if a request is filed with (1) a grantable petition to
make special filed under MPEP 708.02, and (2) unless already
included in the petition to make special, a general statement of the
state of the art and an identification of no more than 3 references
believed to be the "closest" prior art along with an explanation of
how the broadest claim distinguishes over the prior art. This pilot
program will permit the interaction between the applicant and the
examiner prior to the first Office action which should assist the
examiner in developing a better understanding of the nature of the
invention, allow for a more focused search, and potentially reduce the
number of non-final Office actions. If the petition to make special is
not granted, the request for an interview prior to the first Office
action will not be granted. The prohibition to discuss the
patentability of a pending application during an interview prior to the
first Office action, unless the application is a continuation or
substitute is hereby waived for this pilot program.

   The pilot program will last six months, after which an
evaluation of the pilot will be conducted. A notice will be published
in the Official Gazette and will be posted on the USPTO
website after the evaluation to indicate whether the Office will make
the pilot program permanent.

PROCEDURES:

   (1) To be eligible for a pre-first Office action interview,
applicant must have filed a grantable Petition to Make Special under
MPEP 708.02 together with a letter requesting a pre-first Office
action interview in an application classified in Class 705/Subclass
35-45 and assigned to Art Unit 3624 or 3628.

   (2) If a letter requesting a pre-first Office action interview
is filed in an application that is not assigned to Art Unit 3624 or
3628, applicant will be notified that the application is not eligible
for participation in the pilot program.

   (3) If the petition to make special is not granted, the letter
requesting a pre-first Office action interview will not be granted and
applicant will be notified accordingly.

   (4) To the extent that the petition to make special does not
require such information, the letter requesting the interview must
include:

      (a) a general statement by applicant of no more than 200 words
          of the state of the art at the time of the invention; and

      (b) an identification of no more than three (3) references believed
          to be the "closest" prior art and an explanation as to how the
          broadest claim (identify by claim number) distinguishes over
          the submitted prior art.

   (5) If the request for a pre-first Office action interview is
granted and resources permitting, the examiner, after a preliminary
review of the application, will call the applicant no later than 60
days following the grant of the request but before a first Office
action is written and mailed, to set up the pre-first Office action
interview

      (a) the attorney may request either a telephonic or personnel
          interview, and

      (b) the scope of the interview will include:

          (i) a discussion of the features of the claimed subject matter
              that make the invention patentable;

         (ii) a discussion to assist the examiner in developing a better
              understanding of the invention; and

        (iii) a discussion to establish the state of the art at the time
              of the invention.

   (6) Resources permitting, an Office action will be provided no
later than 30 days following the interview.

   The examiner will make an independent search of the prior art
in the examination of the application.

   The petition to make special and the letter requesting a
pre-first Office action interview should be filed in the Office using
the "Express Mail" procedures set forth in 37 CFR 1.10 (see MPEP 513) or
by facsimile transmission to the Office's central facsimile number,
(703) 872-9306. It is suggested that a courtesy copy of the petition to
make special along with the letter requesting the pre-first Office action
interview be either directly faxed to John J. Love, Technology Center
(TC) Director 3600 at 703-306-4597 or hand delivered to the Office of
John J. Love located at 2451 Crystal Drive, Crystal Park 5 - Room 7A03,
Arlington, VA 22202. It is also suggested that if the applicant has not
received a decision on the petition to make special within 30 days after
receipt in the TC Director John J. Love's Office, applicant should make
inquiries to the TC Director's Office at 703-308-1020.

REQUEST FOR COMMENTS:

   Concurrently to run with this pilot, the Office requests
comments from the public on the granting of pre-first Office action
interviews under the conditions of (a) filing a petition to make
special under MPEP 708.02; (b) a letter requesting an interview; and
(c) a discussion of the state of the art and an identification of no
more than three (3) references believed to be the "closest" prior
art along with an explanation as to how the broadest claim
distinguishes over the submitted prior art.

   The time period for comments will end concurrently with the end
of the pilot.

   Comments should be mailed to the Office of the Director of
Technology Center 3600, Attention: John Love, 2451 Crystal Drive,
Crystal Park 5 - Room 7A03, Arlington, VA 22202 or faxed to John J.
Love, Director of Technology Center 3600 at 703-306-4597.

                                                         NICHOLAS P. GODICI
                                                   Commissioner for Patents