Global Patent Prosecution - November 2020: The USPTO's First Action Interview Pilot Program

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Time to grant is vitally important when generating a robust patent portfolio. While speed is critical for many start-ups, it often comes with a price. Track One examination requires payment of fees. And even the patent prosecution highway, which does not have a requirement of a directed fee, still requires the additional cost of multiple applications. The USPTO First Action Interview Pilot Program (FAIPP), however, offers a low cost alternative to a faster allowance.

Under the FAIPP, an applicant is entitled to an interview prior to a first action on the merits. The program requires that the application must not contain more than 20 claims in total, only 3 or fewer independent claims, and no multiple dependencies. Importantly, a preliminary amendment may be filed with an enrollment request to conform the application to the proper claim number. The only other requirement is that an enrollment request be made before issuance of a first action on the merits. The first action can be an Office action, a notice of allowability, or an ex-parte Quayle action, but does not include a restriction requirement. An enrollment request can only be filed after issuance of a restriction requirement if the restriction response was made without traversal.

Once a request for enrollment into the program is made, the examiner will conduct a prior art search and provide the application with a pre-interview communication citing relevant prior art and identifying all proposed rejections. Within 30 days of receiving the pre-interview communication, the applicant must request an interview to proceed in the FAIPP. The request must be filed via EFS Web (PTOL-413A). A one month extension of time is available.

Similar to non-FAIPP interviews, proposed rejections, amendments, and arguments are discussed. Unlike non-FAIPP interviews however, following the interview, the examiner must take the next formal action. These actions can be one of three: (1) allowance without any action on the merits issued; (2) no agreement on allowability and the applicant waives the right to a first action on the merits; or (3) no agreement on allowability and the applicant does not waive the right to a first action on the merits. In the case of (2), the pre-interview communication is converted into first Office action on the merits and the applicant converts the interview request, along with proposed amendments/arguments, into a reply under 37 CFR 1.111. In the case of (3), the examiner must issue a first Office action on the merits, with an interview summary. Prosecution of the application from that point proceeds as would a non-FAIPP application.

The USPTO has received over 2,000 requests for participation in FAIPP and the allowance rate is approximately 35% on the first action. Therefore, the program provides an attractive vehicle to advance prosecution quickly, while having the ability to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process, rather than after a first Office action.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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