IP Law Bulletin

The United States Patent and Trademark Office  (USPTO) recently announced that it is expanding the First Action Interview Pilot Program to include all utility applications in all technology areas. As under the previous program, which was limited by technology area and filing date, an applicant is entitled to a first action interview, upon request, prior to the first Office Action on the merits. The new pilot program is scheduled to run through May 16, 2012.

To take advantage of this program, applicants must electronically file a request for first action interview at least one day before a first Office Action appears in the Patent Application Information Retrieval (PAIR) system. Then, once the application is taken up for examination, the examiner will issue a Pre-Interview Communication containing the results of a prior art search. In response to this communication, the applicant must either file a request not to have a first action interview or schedule the interview and file a proposed amendment or remarks. If the applicant chooses not to have a first action interview, a First Action Interview Office Action will promptly issue with a shortened period for response of one month or thirty days. If the applicant chooses an interview, and the applicant and examiner reach agreement during the interview on the patentability of all claims, a Notice of Allowability will be issued promptly after the interview. If agreement is not reached, a First Action Interview Office Action will be issued with a shortened period for response of one month or thirty days, with limited extensions of time.

Some eligibility requirements exist for participation in the First Action Interview Pilot Program:

1. The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).
2. The application must contain three or fewer independent claims and twenty or fewer total claims. The application must not contain any multiple dependent claims. Applicants may file a preliminary amendment to cancel claims in excess of 20 and/or multiple dependent claims to make the application eligible for the pilot program.
3. The claims must be directed to a single invention. If the Office determines that the claims are directed to multiple inventions, e.g., in a restriction requirement, the applicant must make an election without traverse or withdraw the application from the pilot program.
4. The request for a first action interview must be filed electronically.
5. The request for a first action interview must be filed at least one day before a first Office Action on the merits appears in the PAIR system for the application.
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.

Although the First Action Interview Pilot Program may not accelerate the time before an application is searched and considered by an examiner, the program may help accelerate prosecution once an Examiner is ready to consider the application. Given the expansion of the First Action Interview Pilot Program to include all utility applications in all technology areas, applicants may want to consider reviewing their portfolio of pending U.S. applications awaiting a first Office Action on the merits to determine if a request for a first action interview should be filed before such an opportunity is lost by issuance of an Office Action.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.