The USPTO has initiated a pilot program, known formally as First-Action Interview Pilot Program, which would allow patent applicants to receive prior art search results and resolve patentability issues in real time with the examiner prior to issuance of a first Office action on the merits. Here is how the program works:
An applicant enrolls an application in the program by filing a request.
The examiner follows the restriction policy/practice, examines the application on the merits, and, if applicable, follows the allowance policy/practice.
The examiner issues a pre-interview communication setting a non-extendable one month/30 day time period to request or decline an interview. If the applicant does not reply within this time period, the application becomes abandoned. The pre-interview communication includes the references applicable to the claims, the statutory basis for applying the references to the claims, and a brief explanation of the potential rejections.
The applicant replies to the pre-interview communication by formally declining the interview or by submitting an Applicant Initiated Interview Request form. The form includes information such as names of tentative participants, proposed date of interview (not more than 60 days from issue date of the communication), proposed time of interview, type of interview (e.g., telephonic, personal, or video conference), if any exhibit will be shown or demonstrated, a summary of issues to be discussed, and a brief description of arguments to be presented.
The examiner conducts the interview according to current policy/practice, with a focus on patentability issues, and, after the interview, issues either a notice of allowability or an Office action summary containing requirements, objections, and rejections.
The requirements for enrolling a patent application in the program are as follows:
The application must be a non-reissue, non-provisional utility application under 35 USC 111(a) or in compliance with 35 USC 371(c).
A request for First-Action Interview Pilot Program must be filed in the application electronically via the electronic filing system (EFS-Web) and at least one day prior to the date when a first Office action on the merits, notice of allowance, or action under Ex parte Quayle is issued.
The application must contain 3 or fewer independent claims and 20 or fewer total claims and must not contain any multiple dependent claims.
The application must be (i) classified in class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring), assigned to working group 2140 or 2150 (group art unit 214x or 215x), and filed on or before September 1, 2005, or (ii) classified in class 707 (Data Processing: Database and File Management or Data Structures), assigned to working group 2160 (group art unit 216x), and filed on or before November 1, 2006.
The applicant cannot request for refund of the search fee and any excess claim fees paid after the issue date of the pre-interview communication.