USPTO Extends First Action Interview Program Through August 16

16 July 2012 PharmaPatents Blog

The USPTO has extended the Full First Action Interview Pilot Program to August 16, 2012. According to the Federal Register Notice, the USPTO is “completing a comprehensive review of the program, deciding what, if any, adjustments should be made to the program, and whether the program should be extended further or made permanent.” The USPTO is soliciting public comments on the program, and will consider written comments received by August 8, 2012.

The First Action Interview Program

As I wrote in this article, the USPTO promotes the First Action Interview program as a way to advance prosecution, enhance interaction between the applicant and the examiner, resolve issues one-on-one with the examiner early in prosecution, and facilitate early allowance. I have several applications in the program, and agree that it is a useful option for applicants.

Preliminary Results

According to the USPTO, over 2,100 requests to participate in the program have been received since it was expanded to encompass all applications. Of the applications that have been examined under the program, over 35% have been allowed in the first Action.

The USPTO believes that this program offers at least the following benefits:

  1. effectively advancing prosecution of an application before issuance of an Office action
  2. enhanced interaction between the applicant and the examiner before issuance of an Office action
  3. resolving patentability issues one-on-one with the examiner at the beginning of the prosecution process, rather than after a first Office action; and
  4. expedited allowance of an application, relative to standard examination, due to the program’s enhanced communication and shorter time periods for response.

Request for Comments

The USPTO interested in “receiving feedback as to whether the program is meeting the needs of its applicants, and whether any aspects of the program cause applicants to not participate.” In particular, the USPTO has asked for comments that respond to the following questions:

  1. Based on your use of the program, did you experience the benefits of the FAI program set out above? Did you experience additional benefits?
  2. Did the Pre-Interview Communication provide you with sufficient, meaningful information to conduct an effective interview?
  3. How productive is the interview before first action in advancing prosecution?
  4. How would you rate the extent/utility of the information provided in the Pre-Interview Communication and subsequent Office action?
  5. What changes would you make to the FAI program? How would these changes improve the program?
  6. For any application in which you decided that the FAI program would not meet your needs, what aspect of the program made the program unsuitable for the application?
  7. Do you consider the FAI program to be more efficient (or otherwise beneficial) as compared to traditional prosecution?
  8. Should the Office make the FAI program permanent?

A Few More Weeks Of Datapoints?

I am somewhat surprised that the USPTO only extended this program for a few more weeks. Hopefully it will be extended again right away (so we won’t be left in limbo like we were in May), or made permanent. 

With only 2,100 requests filed, it will be interesting to see how many comments are submitted, and what suggestions people may have for improving the program, or for making it more attractive. If you have used this program, I would be interested in hearing about your experience.

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