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The USPTO Full First Action Interview Pilot Program

Drew Smith and James Brinkley II

On May 6, 2011, the USPTO announced the Full First Action Interview Pilot Program, an extension and expansion of the Enhanced First Action Interview Pilot Program.

Prior to First Office Action. The program provides applicants the right to discuss certain applications prior to the first Office Action on the merits.  Previously, an applicant needed the examiner’s permission before engaging the USPTO at that stage.

To be eligible, the application must contain:

  • Three or fewer independent claims;
  • Twenty or fewer dependent claims; and
  • No multiple-dependent claims.

Examiner Preparation.  If the applicant exercises his or her rights, the examiner will conduct a prior art search and provide a Pre-Interview Communication, citing relevant prior art and identifying proposed rejections and/or objections.  After receipt, applicant may file a request to not have a first-action interview.

Applicant Preparation.  If the applicant wishes to continue, within thirty days of receipt of the Pre-Interview Communication, he or she should schedule the interview and submit arguments, proposed amendments or both.  At the interview, rejections, objections, arguments, and proposed amendments may be discussed.  If agreement as to patentability is reached, the examiner issues a Notice of Allowance.  Where there is no accord, applicant is provided a first Office Action and summary of the interview.

Benefits.  The PTO cites four benefits as justification for the program:

  • The ability to advance prosecution of an application;
  • Enhanced interaction between applicant and the examiner;
  • The opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and
  • The opportunity to facilitate possible early allowance.

Approximately 34 percent of the applications in the prior First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.

Other Details.  There is no fee for participation in the program.  Applications subject to the program will not be advanced out of term for examination.  Rather, they will be examined with regard to their effective U.S. filing date. The Full First Action Interview Pilot Program will continue until May 16, 2012.

Bruzga & Associates recognizes that some clients may wish to participate in the program, as it may streamline prosecution of an application and create a better rapport with examiners.  Our attorneys and agents are fully capable of complying with the requirements.

For more information, contact our office at 646.278.0876 or