Expanding First Action Interview Pilot Program

“Washington — The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is expanding its First Action Interview Pilot Program in which an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application. The program will expand to additional technology areas for a six-month period beginning on October 1, 2009. . . .

 . . . [The] patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one. For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot. . . .

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).”

Details: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.


32 thoughts on “Expanding First Action Interview Pilot Program

  1. 32

    6: “Solution: a a (should be anyway lol)”

    a is right on the first one, but neither answer is definite on the second.

    C could be anywhere.

  2. 31

    “The one thing I forgot about this whole program is: when do we get counts?”

    I’m pretty sure the Examiner gets his/her “first” count after issuing the pre-interview communication. Then the Applicant is allowed to make arguments and amendments and the Examiner is able to go final or allow…or another non-final.

  3. 29

    Curious: the interviews in the FAI pilot require a person with full signatory authority to at least sit in on the interview after the first action.

  4. 28

    I would be satisfied with meaningful interviews after a first office action with examiners who have the authority to allow cases and with examiners who won’t renege when agreement on allowable subject matter over applied art is reached.

  5. 26

    “I found the LSAT invaluable in several regards. I just don’t remember anything that had to do with sorting lists.”

    Apparently you’re not familiar with what you were actually doing in the logic games section.

    Each of seven television programs-A B C D E F G is assigned a different rank: from first through seventh (from most popular to least). The ranking is consistent with the following conditions:

    A and B are each less popular than E
    G and F are each less popular then D
    D is more popular than E.

    Which of the following is an acceptable ranking of programs?

    a. DGFEAB
    b. GFDEAB

    Might not require you to sort the list, but it would be helpful to.

    2. If E is more highly ranked than G (notice I don’t put a comma here because I’m an ashole LSAT writer) and A is more highly ranked then F and B is more highly ranked than A then which of the following must be true?

    a. E must be 2nd and G or B must be 3rd.
    b. D must be first and A must be 4th.

    (I think I crafted this question appropriately, but I may not have, I just made it up on the fly)

    You just sorted a list based upon some criteria if you definitively know the answer to the second problem. Even if you are not aware that you sorted it.

    Solution: a a (should be anyway lol)

  6. 25

    Yes – but the contrast is so stark that I wanted to use 6 like a tissue – I’m trying to make some use out of a blogger who defies all rationality. When 6 starts manning up to some of my challenges you will likely see less of my prodding. Or do you think prodding doesn’t work? (my counter of course would be the wonderful improvement in posts from MaxDrei).

    Plus, I’m doing my part for the Trainwreck Entertainment.

  7. 24

    NAL, is it possible for you to give a compliment without giving an accompanying insult?

  8. 23

    Jules, you have class – quick to apologize when you realize that what you said may be offensive. Contrast that with 6, who delighted in using the N word and was simply unremorseful.

    Thanks for showing that not all examiners are like 6.

  9. 22

    Jules – no worries. Just passing the info along. I realize not everyone is aware of the etymology of the word. I remember when I wasn’t.

  10. 21

    6, I found the LSAT invaluable in several regards. I just don’t remember anything that had to do with sorting lists. Now I understand though, that your comments were only reflecting the first class. Have fun with the rest of it.

    Anyonymous: “FYI – “gyp” is considered by some to be a racially insensitive (or otherwise pejorative) term.”

    Yes, I realized that *after* I used the word. Sorry.

  11. 20

    Does this mean an end to accelerated examinations for all intents and purposes?

    I mean, why go to all the trouble of a pre-x search and worrisome ESD if you can get a real interview right out of the gate for some specific claims that will be first action issued? Will applicants be able to use this program for continuations and divisionals? (As in: let the broad claims run their course and grab some narrow claims so you can start “protecting” immediately.)

  12. 19

    FYI – “gyp” is considered by some to be a racially insensitive (or otherwise pejorative) term.

  13. 18

    Well yes Jules, the LSAT is a gyp, both to law schools and prospective students.

    But the grand I paid is most certainly not a gyp. They’re doing a great job of going over awesome strats already and that was just the first day. I wasn’t horrible at logic games before, but logic games will be my btch by the end. I might even take the class again it is so awesome. If you’re going to take the LSAT I highly recommend the Kaplan class, if not for just its first class.

  14. 17

    Gravy: One of the benefits of not having a strict dress code here at the USPTO is that we don’t have to wear a smile while we do our jobs. And I’ve seen the kind of kowtowing that practitioners have to do when their clients are around – makes me really glad I’m on this side.

  15. 15

    Mooney must be breaking out in a cold sweat. If he likes this program, we will know for sure that he is a duplicitous sleazebag.

    Interviews before the first action are simply a bad idea and open the door to corrupt practices. Historically, interviews before a first action were prohibited by the rules and attempts to get one were frowned upon since it tends to interfere with the Examiner’s objectivity in conducting the initial search.

    I can’t imagine why someone thought this was a good idea. It just goes to show that often times “change” is a reversion back to a previous state that will require the re-learning of new lessons by the ignorant.

    At any rate, no one will so such interviews for the same reasons no one would file an ESD when “the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the “closest” prior art and an explanation as to how the broadest claim distinguishes over such references”

    At any rate this is a de-provement consistent with the kind of retrograde garbage that overzealous “change” advocates always bring. Once the resulting abuse comes to light, interviews before the first action will be prohibited again, like they used to be when people in the patent field knew what they were doing.

    mmmmm mmmmm mmmmm

  16. 14

    This is EESR, American style, isn’t it? EPO should have patented its method of doing business when it was new, about 5 years ago. It could now expect to make a fortune from the ongoing pro rata royalty payments. Except that everybody would know that it would lack the bottle to sue the USPTO for infringement in the event of non-payment. Why not ask President Brimelow later this month at AIPLA in DC how EESR works.

  17. 13

    6: “I started looking into the LSAT and lawlschool. That’s enough to drag anyone down. I’m paying a thousand dollars for people to teach me nice tricks on how to sort lists. I have to admit, I will be a champion list sorter by the end. Still, why being a champion list sorter is a necessary skill for law school I do not presently know.”

    It sounds like you’re getting gipped, lol.

  18. 12

    “Kappos wants power to have examination done overseas.”

    Kappos may also want a couple billion for his own person but that doesn’t mean he has a chance in hell of getting it. Perhaps he should start small, with fee-setting authority.

    “6, your job will be to follow PTO procedure and do it with a smile on your face.”

    I can see that you’re pretty unfamiliar with the PTO.

    “And there are no law firm jobs out there, ”

    There’s not? I was hearing just the other day that recessions are boom times for attorneys (and I presume agents). But I haven’t exactly been looking. And I don’t expect to be until about 5 years from now.

    “the attorneys who work with you know how you operate, and you’ve surely already been blacklisted.”

    If by “this is an examiner whom I love to do business with” is “blacklisted” then I agree. I’ve been totally “blacklisted”.

    “I feel bad, though, 6, for you – what happened to the happy guy laughing and goading for the last year or so? ”

    I started looking into the LSAT and lawlschool. That’s enough to drag anyone down. I’m paying a thousand dollars for people to teach me nice tricks on how to sort lists. I have to admit, I will be a champion list sorter by the end. Still, why being a champion list sorter is a necessary skill for law school I do not presently know.

    “Now that the table is turned,”

    The table turned? Wut? I’m all for pre-first action interviews. And I’ve said that for ages now. I’d love to discuss the case pre-first action. But I wouldn’t expect for there to be any prior art besides that which the applicant has provided on the table to discuss. And there is no way anyone will get anyone to put any art on a record that they don’t want to put there. There are aplenty of issues in most cases pre-first action to take up our (hour of?) time without even getting into the art anyway. You and your fellows are that bad at drafting. No offense intended what so ever, but you guys are as a whole.

    Here just lately I put a little note in a restriction requirement going out. No search, no nothing. Just a little comment. Case abandoned. I’m not even making this up. They were literally so bad at drafting a claim/spec that it didn’t matter what art I applied (including his AAPA), it would still be a 102 for the whole of the subject matter in the spec.

    And don’t worry I’ll be loling my arse off when Tafas gets moving. JD’s going to owe me 200$ too. What’s up with PH’s case too?

    “Folks, we’re entering the golden age of patent prosecution.”

    That’s enough to make me

    lolololololololololololol.

    “No more 5 minute Google searches for you!”

    I don’t know what makes you think that. Perhaps you could be specific?

    Everyone here thinks that this change, perhaps coupled with the change of the count system is going to have some major impact on things.

    Newsflash: It isn’t.

    In fact, it is literally impossible for it to. Whether you choose to “religiously” ignore this or not isn’t going to change this.

  19. 10

    “jobs” may work through outsourcing – see today’s Wall Street Journal. Kappos wants power to have examination done overseas.

  20. 9

    6 said, “I won’t “do my job” if I’m not paid”

    They’re just trying to get you to actually do the job for which you have been getting paid all along. No more 5 minute Google searches for you!

  21. 8

    6, your job will be to follow PTO procedure and do it with a smile on your face. If not, you’ll be out the door. And there are no law firm jobs out there, so no one will make the mistake of hiring you without knowing you are one of “those” examiners. (Here’s a hint for Malcom and 6 – even though we don’t know your name on this board (although it would be easy enough to out you if it were worth the minimal effort), the attorneys who work with you know how you operate, and you’ve surely already been blacklisted. Hope you want to stay at the PTO forever).

    I feel bad, though, 6, for you – what happened to the happy guy laughing and goading for the last year or so? Remember how much you laughed and laughed after the Tafas case was heard by the CAFC. Now that the table is turned, you seem almost – bitter. And here we, the attorney kings are, laughing as you once did.

    Folks, we’re entering the golden age of patent prosecution.

  22. 7

    “6 – so you’re suggesting that you won’t do your job if you don’t get what you want out of it? ”

    I’m suggesting nothing. However, I will state that I won’t “do my job” if I’m not paid. Maybe you’re unfamiliar with how “jobs” work.

  23. 6

    6 – so you’re suggesting that you won’t do your job if you don’t get what you want out of it? Note – this is a rhetorical question…I have no desire to engage in any “discussion” with you.

  24. 5

    Counts? Examiners get counts for actions and allowances. That’s the way it should be. This is just another step toward curtailing the RCE gravy train practice.

    I really like this practice. It lets us move to appeal/abandon after just a couple of Office actions. I just wish the Office would change its after final interview rules so that I could call and figure out whether an RCE is a valid option or not.

  25. 3

    Ha ha ha I wouldn’t let anything go to your head, if someone should so desire that it be so, the pre-conference search can be less than stellar.

    No pay, no play.

  26. 2

    No counts for you – hold on tight, because the pendulum is swinging back fast!

    You get counts for Office Action and allowances, so be prepared for some more free work at the beginning!

    Welcome back, old school PTO, where the Examiner’s have a reason for all the complaining they will do (regardless of conditions), and attorneys are kings!

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