USPTO Extends First Action Interview Program Through November 16

28 August 2012 PharmaPatents Blog

The USPTO has extended the Full First Action Interview Pilot Program to November 16, 2012. According to the notice available on the USPTO’s Web site, the USPTO is “analyzing feedback obtained in response to the July 9, 2012 request for comments,” which were due 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.

Evaluating the Program

With only 2,100 requests to participate in the First Action Interview program 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. I am generally in favor of this program, as it appears to offer potential benefits with few drawbacks.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Insights