Can We Talk?

A brief summary of the patent prosecution process helps illustrate where the First Action Interview Program can reduce the patent prosecution time. In a conventional patent application cycle, the patent applicant submits an application to the Patent Office, and the application sits in a queue until the examiner evaluates the patentability of the claims. If the examiner considers one or more claims not to be patentable, the examiner issues a first official action. The applicant can respond by arguing the merits of the claims based on how the claims currently exist in the application or by amending the claims in the application to make them patentable. The examiner, in turn, can either allow the claims or issue a subsequent (non-final or final) official action. Under the best of circumstances, it can take months for the Patent Office to issue a subsequent official action, and the response from the applicant can take weeks or months. In 2010, the average time from filing a patent application until the first official action, was 25.7 months, and the average time from filing until the application issued as a patent or was abandoned was 35.3 months.

The heart of the First Action Interview Program is an interview between the applicant and the examiner in which the examiner and the applicant can talk about the application before the examiner issues the first official action. Participants in the earlier First Action Interview Programs have found the program beneficial because it gives the applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the patent prosecution process. (See www.uspto.gov/pat ents/init_events/faipp_enhanced.jsp#heading-2). When the applicant and the examiner communicate before the first official action, much of the patent prosecution activity that would normally follow the first official action can be reduced. The First Action Interview applications are not considered out of turn and, thus, the program does not shorten the time between filing the application and the first office action. The prosecution time saving benefit is realized by potentially reducing the time between the first office action and issuance. Statistics published by the Patent Office indicate that resolving issues before the first official action can lead to early allowance of the patent application. Indeed, under the First Action Interview Pilot Programs, approximately 34% of all applications were allowed on the merits on the first action, compared with about 11% of all applications not involved in the program. Furthermore, the 34% allowance rate includes data from the original First Action Interview Pilot Program, which had a first action allowance rate of 25%. The more recent Enhanced First Action Interview Pilot Program had a first action allowance rate of more than 41%. (“Full First Action Interview (FFAI) Pilot Program” presentation by Wendy Garber, Tech Center Director, 2100, USPTO, April 26, 2011, available at www.uspto.gov/patents/init_events/faipp_full_overview.ppt).

Existing Patent Office rules already allow an applicant to request an examiner interview before the first official action. Unfortunately, those interviews are granted at the examiner's discretion, and the examiner may require the applicant to show why such an interview is justified. Under the First Action Interview Program, the interview is granted on a non-discretionary basis, provided the applicant follows specific procedures defined by the program. To qualify for the program, the applicant must file the request for interview before May 16, 2012 and meet each of the following requirements:

1. The application must be a non-reissue, non-provisional utility application or an international application that has entered a national stage.
2. The application must contain three or fewer independent claims and 20 or fewer total claims, and no multiple dependent claims. Applicants may file a preliminary amendment to cancel excess claims or multiple dependent claims.
3. The claims must be directed to a single invention. If the Patent Office determines that the claims are directed toward multiple inventions, it will issue a restriction requirement. The applicant may then make an election without traverse or withdraw the application from the pilot program. Failure to make an election without traverse disqualifies the application from the First Action Interview Program.
4. The request for a first action interview must be filed electronically. Applicants should use form PTO/SB/413C, which is available on the Patent Office website ( www.uspto.gov).
5. The request must be filed at least one day before a first official action on the merits of the application appears on the Patent Application Information Retrieval (“PAIR”) website.
6. The request for a first action interview must include a statement that applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication. Any petition for express abandonment under 37 C.F.R 1.138(d), request for a refund of search fee, and any excess claim fees filed after the mailing or notification date of a Pre-Interview Communication will not be granted.

If the application meets these requirements, the examiner will conduct the usual prior art search for the patent application. As with regular applications, First Action Interview applications are considered in turn based on their filing date and the queue of the art unit at the Patent Office. Based on the prior art search, the examiner will issue a Pre-Interview Communication to the applicant. That communication will include citations to prior art references and an identification of any rejections of or objections to the claims. The applicant then has one month to schedule an interview with the examiner and submit any proposed amendments or remarks, or else file a request not to have the first action interview with the examiner. If the applicant requests not to have the first action interview, the first office action is entered and the applicant has one month to reply. Assuming the applicant chooses the interview, the applicant and the examiner can use the interview to talk about the prior art and try to identify the broadest allowable patent claims. The Patent Office has published a list of talking points for use during the interview, which includes discussing the current state of the art and relevant references, the broadest reasonable interpretation of claims, the meaning of specific claim terms, and the affect of preamble language. (“Applicant's Pre-Examination Interview Talking Points,” available at www.uspto.gov/patents/init_events/faipp_full_preog.pdf). After the interview, the examiner will (it is hoped) issue a Notice of Allowability or a First Action Interview Office Action. There is no additional fee required to participate in the First Action Interview Program. Therefore, it may be an effective way to reduce the time from the first official action to the issuance of the patent.

Don't Delay

Time may be running out to take advantage of the program. As mentioned above, the Full First Action Interview Pilot Program is a pilot program that is scheduled to end on May 16, 2012, but applicants that apply and meet all requirements will be able to participate in the program regardless of whether the interview and first official action occur after the end-date of the program. Even though previous First Action Interview pilot programs were extended past their original end dates, there is no guarantee that the Patent Office will extend the current Full First Action Interview Pilot Program. Indeed, in 2012, it is unknown whether the Patent Office will have the desire or ability to extend the program because it may need to use its limited resources to implement the America Invents Act patent reform legislation. So those interested in talking to the examiner as part of the pilot program should request an interview without delay.

Glenn M. Strapp is a Technology associate in Bracewell & Giuliani LLP's Houston office. His focus is on drafting, filing, and prosecuting patent applications before the USPTO. Jeffrey S. Whittle is head of the firm's Technology practice and a partner in Bracewell's Houston office. He has experience in patent prosecution at all levels before the USPTO, as well as experience in technology-based transactions including licenses and various other agreements.

Talking to patent examiners often helps advance the examination of a patent application. Now data from the U.S. Patent and Trademark Office (“Patent Office”) show that by talking to a patent examiner prior to a first official action, an applicant is three times more likely to get a first action allowance of a patent application. A newly expanded Patent Office program makes it easier to talk to the examiner prior to initial examination. (“Full First Action Interview Pilot Program,” Kappos, David J., Director of the United States Patent and Trademark Office, May 6, 2011). The heart of the program is an “Examiner Interview” that takes place before the examiner issues a first official action, which allows the examiner and patent applicant to discuss the application, identify allowable patent claims, and shave months or years off of the time from filing of an application to receipt of an issued patent.

The new program, officially called the Full First Action Interview Pilot Program, is not entirely new. The First Action Interview Pilot Program began in April 2008, and this initial program transitioned into the Enhanced First Action Interview Pilot Program in October 2009. Those programs were limited to patent applications in specifically identified technologies, or “art units,” within the Patent Office (those art units are identified on the Enhanced First Action Interview Program website at www.uspto.gov/patents/init_events/faipp_enhanced.jsp#heading-2). Under the new full program, patent applications in all art units are eligible, provided that the applications meet other specific requirements. Unlike the previous interview pilot programs, the full program does not limit eligibility to patent applications filed before a specific date. The full program, however, remains a pilot program and is scheduled to continue only until May 16, 2012. The one-year period will give the Patent Office time to collect more data on the benefits of the full program.

The Patent Prosecution Process

A brief summary of the patent prosecution process helps illustrate where the First Action Interview Program can reduce the patent prosecution time. In a conventional patent application cycle, the patent applicant submits an application to the Patent Office, and the application sits in a queue until the examiner evaluates the patentability of the claims. If the examiner considers one or more claims not to be patentable, the examiner issues a first official action. The applicant can respond by arguing the merits of the claims based on how the claims currently exist in the application or by amending the claims in the application to make them patentable. The examiner, in turn, can either allow the claims or issue a subsequent (non-final or final) official action. Under the best of circumstances, it can take months for the Patent Office to issue a subsequent official action, and the response from the applicant can take weeks or months. In 2010, the average time from filing a patent application until the first official action, was 25.7 months, and the average time from filing until the application issued as a patent or was abandoned was 35.3 months.

The heart of the First Action Interview Program is an interview between the applicant and the examiner in which the examiner and the applicant can talk about the application before the examiner issues the first official action. Participants in the earlier First Action Interview Programs have found the program beneficial because it gives the applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the patent prosecution process. (See www.uspto.gov/pat ents/init_events/faipp_enhanced.jsp#heading-2). When the applicant and the examiner communicate before the first official action, much of the patent prosecution activity that would normally follow the first official action can be reduced. The First Action Interview applications are not considered out of turn and, thus, the program does not shorten the time between filing the application and the first office action. The prosecution time saving benefit is realized by potentially reducing the time between the first office action and issuance. Statistics published by the Patent Office indicate that resolving issues before the first official action can lead to early allowance of the patent application. Indeed, under the First Action Interview Pilot Programs, approximately 34% of all applications were allowed on the merits on the first action, compared with about 11% of all applications not involved in the program. Furthermore, the 34% allowance rate includes data from the original First Action Interview Pilot Program, which had a first action allowance rate of 25%. The more recent Enhanced First Action Interview Pilot Program had a first action allowance rate of more than 41%. (“Full First Action Interview (FFAI) Pilot Program” presentation by Wendy Garber, Tech Center Director, 2100, USPTO, April 26, 2011, available at www.uspto.gov/patents/init_events/faipp_full_overview.ppt).

Existing Patent Office rules already allow an applicant to request an examiner interview before the first official action. Unfortunately, those interviews are granted at the examiner's discretion, and the examiner may require the applicant to show why such an interview is justified. Under the First Action Interview Program, the interview is granted on a non-discretionary basis, provided the applicant follows specific procedures defined by the program. To qualify for the program, the applicant must file the request for interview before May 16, 2012 and meet each of the following requirements:

1. The application must be a non-reissue, non-provisional utility application or an international application that has entered a national stage.
2. The application must contain three or fewer independent claims and 20 or fewer total claims, and no multiple dependent claims. Applicants may file a preliminary amendment to cancel excess claims or multiple dependent claims.
3. The claims must be directed to a single invention. If the Patent Office determines that the claims are directed toward multiple inventions, it will issue a restriction requirement. The applicant may then make an election without traverse or withdraw the application from the pilot program. Failure to make an election without traverse disqualifies the application from the First Action Interview Program.
4. The request for a first action interview must be filed electronically. Applicants should use form PTO/SB/413C, which is available on the Patent Office website ( www.uspto.gov).
5. The request must be filed at least one day before a first official action on the merits of the application appears on the Patent Application Information Retrieval (“PAIR”) website.
6. The request for a first action interview must include a statement that applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication. Any petition for express abandonment under 37 C.F.R 1.138(d), request for a refund of search fee, and any excess claim fees filed after the mailing or notification date of a Pre-Interview Communication will not be granted.

If the application meets these requirements, the examiner will conduct the usual prior art search for the patent application. As with regular applications, First Action Interview applications are considered in turn based on their filing date and the queue of the art unit at the Patent Office. Based on the prior art search, the examiner will issue a Pre-Interview Communication to the applicant. That communication will include citations to prior art references and an identification of any rejections of or objections to the claims. The applicant then has one month to schedule an interview with the examiner and submit any proposed amendments or remarks, or else file a request not to have the first action interview with the examiner. If the applicant requests not to have the first action interview, the first office action is entered and the applicant has one month to reply. Assuming the applicant chooses the interview, the applicant and the examiner can use the interview to talk about the prior art and try to identify the broadest allowable patent claims. The Patent Office has published a list of talking points for use during the interview, which includes discussing the current state of the art and relevant references, the broadest reasonable interpretation of claims, the meaning of specific claim terms, and the affect of preamble language. (“Applicant's Pre-Examination Interview Talking Points,” available at www.uspto.gov/patents/init_events/faipp_full_preog.pdf). After the interview, the examiner will (it is hoped) issue a Notice of Allowability or a First Action Interview Office Action. There is no additional fee required to participate in the First Action Interview Program. Therefore, it may be an effective way to reduce the time from the first official action to the issuance of the patent.

Don't Delay

Time may be running out to take advantage of the program. As mentioned above, the Full First Action Interview Pilot Program is a pilot program that is scheduled to end on May 16, 2012, but applicants that apply and meet all requirements will be able to participate in the program regardless of whether the interview and first official action occur after the end-date of the program. Even though previous First Action Interview pilot programs were extended past their original end dates, there is no guarantee that the Patent Office will extend the current Full First Action Interview Pilot Program. Indeed, in 2012, it is unknown whether the Patent Office will have the desire or ability to extend the program because it may need to use its limited resources to implement the America Invents Act patent reform legislation. So those interested in talking to the examiner as part of the pilot program should request an interview without delay.

Glenn M. Strapp is a Technology associate in Bracewell & Giuliani LLP's Houston office. His focus is on drafting, filing, and prosecuting patent applications before the USPTO. Jeffrey S. Whittle is head of the firm's Technology practice and a partner in Bracewell's Houston office. He has experience in patent prosecution at all levels before the USPTO, as well as experience in technology-based transactions including licenses and various other agreements.