First Action Interview Pilot Program: Requirements and Procedures
The First Action Interview Pilot Program was first introduced in April of 2008. This was followed by an enhanced program version of the First Action Interview Pilot
Program in October of 2009. The enhanced program was recently extended to run through October 1, 2010. The program’s goal is to allow an interview with the Examiner
prior to issuance of a first Office Action on the merits, thereby reducing pendency of the patent application.
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In order to participate in the program, applications must be assigned to an eligible art unit and must meet the filing date requirement for that art unit
(to see the date requirements, click
Here). The application
must be a non-reissue, non-provisional utility application under 35 U.S.C. § 111(a) or a national stage application under 35 U.S.C. § 371. The application must have
three or fewer independent claims and twenty or fewer total claims with no multiple dependent claims. In addition, the application must claim only a single invention
and must not have a first Office Action on the merits as of the date Applicant requests participation in the program.
Prior to granting the interview, the Examiner should follow the following procedures:
- Follow current restriction policy and practice;
- Conduct a prior art search;
- Follow current policy and practice if a determination of allowability is made; and
- Issue a Pre-Interview Communication (Form PTOL-413FP) setting a 30-day time period to request or decline the interview.
Applicant should follow the following procedures:
- Follow the current restriction policy and practice, except that Applicant must elect without traverse in order to stay in the program;
- Timely respond to a Pre-Interview Communication from the Examiner (Applicant can obtain a single 30 day extension, which was not allowed under the previous
program);
- Properly respond to a Pre-Interview Communication by filing: (1) a request not to conduct the interview; or (2) an “Applicant Initiated Interview Request’ Form
(PTOL-412A) along with proposed amendments and/or arguments.
Once the interview is conducted, Applicant must timely respond to all outstanding issues in accordance with current USPTO policies and procedures. Applicant must also
make the substance of the interview of record when filing a timely response. The Examiner must proceed in accordance with current USPTO examination procedures and
also ensure that the substance of the interview made of record by Applicant is accurate.
Under the Enhanced First Action Interview Pilot Program, the following are key points to keep in mind when participating in the program.
(1) The program requires election without traverse;
(2) The response period to a Pre-Interview Communication is extendable by one month;
(3) Applicant may waive the interview and First Action Interview Office Action, and submit a response to the Pre-Interview Communication;
(4) Failure to timely response to the Pre-Interview Communication is treated as a waiver to conduct the interview; and
(5) Applicant may waive notification of a First Action Interview Office Action and submit a response at the conclusion of the interview.
A helpful visual overview of the Enhanced First Action Interview Pilot Program is provided by the USPTO.
To view the full image from the USPTO presentation, please click
Here.