The United States Patent and Trademark Office (USPTO) has implemented a Full First Action Interview Pilot Program which allows the applicant to conduct the interview prior to the first office action on the merits. In my experience, telephonic interviews are in general fruitful in that a dialogue is started with the examiner to understand the examiner’s understanding of the invention and the prior art and to correct any misunderstandings verbally instead of through a written correspondence which is not the best form of communication to get to the point quickly. Written correspondence is required with the USPTO to make the record complete.
By conducting the interview prior to the initial office action, there are at least three benefits in conducting the interview prior to the first office action.
1. An interview prior to the initial office action provides for an extra round of communication with the examiner prior to any office action being made final
To start the examination process, an application for patent is filed which includes a written description and drawings that describe the invention. Once the application is filed, the examiner reviews the application for patent, conducts a patentability search and renders an office action which is the first communication on the merits of the application for patent. Thereafter, the applicant has the option to schedule a telephonic interview with the examiner to discuss the invention and the prior art or to file a written response.
If the telephone interview is chosen, the applicant may respond to the office action and incorporate any suggestions made by the examiner during the discussion with the examiner. You can also have an in-person or web based interview but the telephonic interview is common and least costly of the types of interviews yet effective.
Typically, after the response is filed, the examiner will review the response and render a second office action. This second office action is typically made final. When an office action is made final, prosecution or examination of the patent application is closed. Practically speaking, this means that the examiner will no longer consider arguments on the merits and no amendments to the claims will be entered. There two rounds of communications with the examiner to convince him or her to allow the case to mature into a patent.
In order to continue prosecution or examination on the exam and claims, the applicant must file a request for continued examination (RCE) and pay the fee for the RCE or file a continuation application.
The RCE and the continuation patent application incurs an additional cost. During normal prosecution, the applicant for patent and the examiner has at least two rounds of communication before the examination is closed by the examiner. The two rounds include the written response which is required to maintain the patent pendency of your patent application and the second is the telephonic interview which occurs after receipt of the initial office action. If the next office action is not made final then you can have more rounds of communication with the examiner typically the second office action is made final.
By requesting participation in the Full First Action Interview Pilot Program , the applicant may receive an additional round of communication through the telephonic interview which would occur before the mailing of the initial office action. The applicant for patent may amend the claims and present remarks in response to this telephonic interview which occurs prior to the initial office action on the merits. Thereafter, the examiner will provide the initial office action and the patent applicant may request a second interview and provide the written response to the first office action.
The benefit of having the additional round of communication with the examiner is that more time is given to resolve any misunderstanding and the applicant has an additional opportunity to provide remarks and amend the claims in order to move the case forward to a notice of allowance of the claims at issue.
2. Full First Action Interview Pilot Program may expedite issuance of the patent by few months
Participation in the Full First Action Interview Pilot Program does not guarantee a patent. However, the statistics show an increased allowance rate for patent applicants to participate in the Full First Action Interview Pilot Program . In my opinion, this does not increase the probability of securing the patent on the invention but does accelerate the issuance of the patent should one issue. Let me explain this statement. In my opinion, if a patent would have eventually issued on a patent application, then it would likely merely accelerate the time for the examiner to come to that decision. However, if a patent would not have issued on the patent application, then the extra rounds of communication would not increase the likelihood of receiving the notice of allowance and patent.
To explain further, during normal examination, the first telephonic interview is held after the initial office action was mailed to the patent applicant. The office action is reported to the client and a discussion is held with the patent attorney as to next steps. If the next step is to hold a telephonic interview, then the telephonic interview scheduled about 1 to 3 weeks out. By conducting the telephonic interview later in the process, this introduces delays which could be avoided by participating in the Full First Action Interview Pilot Program.
By requesting the Full First Action Interview Pilot Program , that first telephonic interview can be held a few months earlier. This means that any patent that would have issued had the telephonic interview been held a few months later will issue a few months earlier. Although a simple concept, sometimes applicants want to expedite patent allowance as soon as possible. The Full First Action Interview Pilot Program is a means by which applicants who want to accelerate as much as possible any patent that might issue from a patent application by having the telephonic interview earlier than later.
3. Full First Action Interview Pilot Program allows for communication with the examiner in the event that the first office action is made final
MPEP 706.07(b) explains when it is appropriate to make the first office action. In particular, the MPEP states that:
“the claims of the new application may be finally rejected in the first office action in those situations where (A) the new application is the continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly filing rejected on the grounds and art of record in the next office action if they had been entered in the earlier application.”
Simply put, as explained above, when prosecution of the patent application closes, the applicant has two options to continue prosecution. The applicant may file a RCE or file a continuation application to continue that prosecution. This section states that when you file a continuing application (i.e. continuation patent application), then there are times when the first office action can be appropriately be made final. Once the first office action is made final, it is very difficult to convince the examiner to withdraw the finality of the office action. In fact, it is less expensive to merely refile a second continuation application.
To avoid the possibility that the first office action of a continuation application may be made final, the request to participate in the Full First Action Interview Pilot Program may be filed. By doing so, the examiner’s required to send a short form pre-interview communication which states briefly any basis for rejecting the claims. The applicant would schedule an interview and can propose amend the claims and discuss those amend the claims with the examiner during the interview.