Pre-Examination Interview Program Formalized and Expanded to All Art Units

The USPTO has expanded its “First Full Action Interview” pilot program to include all areas of technology.  Under the program, patent applicants may request (and must be granted) an interview with the patent examiner assigned to the case prior to the first Office action on the merits.

To be eligible, the pending application must not have more than three independent and twenty total claims all directed to a single invention (i.e., not subject to a restriction requirement).  To participate, an applicant must electronically file a request for a first action interview at least one day before an Office action is entered into PAIR.  An application that does not originally fit within the requirements can become eligible through a preliminary amendment.

Timing: Requests may be filed as of today, May 16, 2011.  The pilot program will run for one year.

Prior to the interview, the examiner is required to prepare a “pre-interview communication” that indicates references to be cited and outlines any potential rejections/objections. 

Since taking office as USPTO Director, David Kappos has pushed for more direct interaction between patent applicants and patent examiners.  In the USPTO press release, Kappos is quoted saying

We’re expanding this pilot program because we’ve seen that, by enhancing the interaction between the applicant and the examiner early in the examination process, it helps both applicants and the USPTO.  We hope that by expanding the pilot to even more technology areas, we will see many more applicants take advantage of this program and realize its benefits.

In the prior pilot, the USPTO found that about 1/3 of applications were allowed in the first office action on the merits. (Outside the program, only about 11% of applications receive a first-action allowance.)

No additional fees are required to participate in the program. However, applicants must waive their right to request a pre-examination refund of fees.

Notes:

   

  

60 thoughts on “Pre-Examination Interview Program Formalized and Expanded to All Art Units

  1. 59

    Excellent argument to traverse the usual BS restriction requirement. I’m going to borrow it.

    I’ll let you know how it goes.

    Thanks.

  2. 58

    Perhaps the “difficulty” needs to be reassessed given that PHOSITA is not so burdened as long as solutions from disparate art fields can be put together like pieces of a jigsaw puzzle. Seems if it is good enough for the Supremes, it should be good enough for the examiners.

    And after all, examiners routinely make such jigsaw rejections anyway and thus routinely disprove that this is any type of actual burden.

    What’s good for the goose is good for the gander, I say.

  3. 57

    My concern with the program is the limitation that it will not be available if a restriction requirement is available to the examiner. In my experience some examiners automatically make a restriction, but others are more generous and they dont. I speak this way because restriction is very much at the discretion of the examiner. Sometimes I argue, but as a practical matter if the examiner sticks to the restriction, its over. Typically we file an apparatus claim series, a method claim series and sometimes a means plus function series and sometimes a system claim series. If I argue that the burden isnt “a serious burden” the examiner can and usually does, just say yes it is, and he can cite a set of art fields that have to be searched, end of discussion.

    Now maybe, by applying for the pre-interview, the restriction will not be made in close cases where otherwise it would; that would make it very useful.

  4. 56

    You guys seem a little confused. Divisional applications are not subject to double patent. If you get one, just point that out. If you are filing terminal disclaimers in divisionals, I have trouble understanding how you stay in business. Second, if you get a plurality of dependent claims allowable after the communication, and you make them all independent, you get dropped from the program, which means, your application becomes a regular application (getting dropped from the program doesn’t mean your application is abandoned) with already allowable subject matter. Don’t see the issue. Don’t see the advantage either. You want this program, but don’t like the restrictions? Ask for an interview after non-final. Same thing. I really don’t see the point in this, for anybody involved. I would like to see how the program compares to regular examination with interviews. I have seen no comments on that. I am sure it does better than filing responses forever and never bothering to give the examiner a call.

  5. 55

    If you look at the agreement POPA signed with the PTO, the Examiner gets their counts after they completed the Pre-Interview Communication.

  6. 54

    Agent Zero Patent prosecution is not a one size fits all process. To lambast a program of high value to some applicants is silly. For cases that I was thinking about going ‘Track 1’, this is a very viable alternative.

    Please be aware that while this program may speed up the allowance of an application relative to another application that is “picked up” at the same time, it does NOT increase the rate at which an application will be picked up, i.e., it does not jump ahead in the queue of applications to be examined, unlike the case with applications expedited under other PTO programs.

  7. 53

    but I don’t need a lecture

    Evidence clearly indicates otherwise.

    If you feel strongly about it, then do a better job of following your own advice.

  8. 52

    Why not tweak this a little to allow the interview after a restriction requirement as long as Applicants commit to an election?

    No need to tweak anything – this is precisely how it works. If you elect claims without traversing, you still get the pre-OA interview. If you decide that you need to traverse, then you don’t.

    But then, I suggest you actually read the PTO’s description of the program, rather than relying on the sky-is-falling guesses about the program that are found here.

  9. 51

    I don’t see that limitation in the rules, but even if it were the case, couldn’t you just file a continuation on the other claims? Sorry if I’m not getting it. newbie here.

  10. 50

    Thanks, but I don’t need a lecture on my “responsibility for advocacy” from a dope like you.

  11. 49

    Understanding the examiner’s behavior is fine – but you do understand that your responsibility for advocacy means that you do not let the examiner’s behavior override the legitimate rights of your client, correct?

    I think that is the only thing that Les is trying to say. If you would stop trying to be a Troll and stop overreading the comments, you might have a better chance of understanding them.

    Preaching to others the importance of understanding while you show a lack thereof is more than a bit ironic.

  12. 48

    I’m not defending them. I’m acknowledging their existence and understanding the impact they have on the examiners’ behavior. You might want to try it.

  13. 47

    “Not my problem.”

    Uh, yes it is. If you refuse to understand that the examiner can, in the allotted time of 20 hours or so, give more careful consideration to 20/3 claims than he/she can give to 200/30 claims, then you’ve got even bigger problems.

  14. 45

    “You know how the system works. You know what the rules are. You might be a little more productive figuring out how to get the most you can within the system and rules we have instead of constantly whining that you want more. You’re not going to get more. Get over it.”

    The rules you are defending are absurd. Get over it.

  15. 44

    “It has been explained to you and others many times that the examiner gets a fixed amount of time to dispose of the application, regardless of the number of claims.”

    Not my problem. If the Office treats applications as one size fits all commodities, that a problem internal to the office and its negotiations with the union. Talk to your shop steward, not me.

  16. 43

    Yes seriously. If electronic filing is so easy and such a boon to mankind, why do they feel the need to keep mandating its use? Wouldn’t people just use it naturally?

    What purpose is served by requiring the use of electronic filing to “take advantage” of this program? Only to make it more difficult to use for solo inventors…

  17. 42

    That should read “If restrictions were reasonable, then they wouldn’t have to worry about traversals.”

  18. 41

    “outline rejections”

    How are they going to outline a rejection that is “(Fig.2, 12)” at full length? Will it just be –Fig.–?

  19. 40

    But it might soften the blow that you’re essentially doing a cursory version

    You miss the point IANAE – that “cursory view” is now done without credit.

    should be relatively predictable

    You were born yesterday then.

    Also, think of the poor agent,… and also loses out on two or more responses’ worth of billable time.

    Not likely – for some reason you think agents are out to milk their clients – you do not understand agents at all. Our plates are full and we have plenty of items to bill upon.

  20. 39

    If traversals were reasonable, then they wouldn’t have to worry about traversals. Why remove an opportunity to correct a mistake in the name of “streamlining”.

  21. 38

    Yes. And often made incorrectly. If it wasn’t, they wouldn’t be worried about traversals. So, I wont be “taking advantage” of this program any time soon.

    Of course, examiners are always welcome to call.

  22. 37

    Those things shouldn’t both be happening.

    No duh – there are lots of things that shouldn’t be happening.

    Were you born yesterday, rube?

  23. 36

    BZZZZZZT.

    Wrong – you lose patentable subject matter because you are constrained to threee independent claims.

    What a rube.

  24. 35

    That looks like a requirement to search and “outline” rejections without any counts (i.e. extra work without any benefit).

    Yes, it does look like that. But it might soften the blow that you’re essentially doing a cursory version of what you’d have done on a first action anyway, and since you’re actually talking to the agent his next amendment should be relatively predictable, and you have three times the chance of getting an easy first action allowance count.

    Also, think of the poor agent, who is forced to talk to other humans just like you are, and also loses out on two or more responses’ worth of billable time. We all have our problems.

  25. 34

    “Prior to the interview, the examiner is required to prepare a “pre-interview communication” that indicates references to be cited and outlines any potential rejections/objections.”

    That looks like a requirement to search and “outline” rejections without any counts (i.e. extra work without any benefit).

  26. 33

    we invariably get a restriction requirement

    essentially volunteer to file terminal disclaimers

    Those things shouldn’t both be happening.

  27. 32

    Let’s engage a quick thought experiment: you start with 1 independent and 19 dependent (and just for jakes, each a single level dependency). Your independent claim is rejected, but all other claims are allowed if rewritten in independent form.

    Now what?

    You lose your entitlement to the interview you’ve already conducted, and you get a Notice of Allowance within one bi-week?

  28. 31

    It’s very nice that the PTO is trying things like this. Unfortunately we invariably get a restriction requirement (even though we usually fall under the 3/20 claim totals), so this won’t be any use to us as we’re not going to try to guess what the Examiner might restrict as well as essentially volunteer to file terminal disclaimers if we end up getting more than one patent. Why not tweak this a little to allow the interview after a restriction requirement as long as Applicants commit to an election?

  29. 30

    Wow, seems like a lot of the PO regulars are in the business of not getting their clients patents. Is this program for every application? Of course not. But why not avail yourself of a great opportunity to get one in hand while the continuation simmers for the next 10 years?

    For my clients who really know the art (or have a good search done) and help me file appropriate claims, this will be great. The examiner and I can then argue about 5.5 vs. 5.6 on the 1 to 10 scale of narrow to broad.

    For my clients who want me to spend time arguing about ambiguous terms in the claims, we won’t use the program. For those I’ll spend a decade arguing 2 vs. 9 on the 1 to 10 scale and keep racking up the bills.

    Patent prosecution is not a one size fits all process. To lambast a program of high value to some applicants is silly. For cases that I was thinking about going ‘Track 1’, this is a very viable alternative.

  30. 29

    This isn’t a pre- anything. It’s just another platitude for the liberal arts majors. The Examiner must have already searched and prepared a “communication” indicating the rejections that are going to me made, which is essentially an unofficial version of the FAOM. Not really sure what this accomplishes, except to give the applicant a chance to have a say before an official first action issues, however, the “communication” will be of record, as I assume the interview summary will.

  31. 28

    Seriously?

    (I’m new here, but based on what I’ve seen, I’m afraid that some of the readers will answer my rhetorical question with a sincere “yes.”)

  32. 27

    Apparently it was a success by PTO standards

    2) This program will be a bust.

  33. 26

    4) Smart attorneys… will not go near this program.

    Apparently it was a success by PTO standards, which is why they are expanding it. I guess all those folks who got patents granted under the previous iteration were suckers?

    Oh, right: the more important thing is to waste a year or two arguing about an allegedly improper restriction requirement. Clients love that sort of thing.

  34. 25

    just have an excellent search, a solid first OA and a meaningful interview following the first OA

  35. 24

    How does this really change anything?

    The only differences I see is that the PTO gives applicants the option to file a new petition and that the PTO has renamed the FAOM a Pre-Interview Communication.

    In both cases, the applicant is required to request the interview, no interviews occur prior to the first letter sent by the examiner, and no interviews occur prior to the first search. Applicants can already have the same procedure simply by requesting an interview after the FAOM.

    If the PTO really wanted to change something, they should have an interview prior to the first search that discussed the inventive concept and addressed all non-prior art issues. That might actually speed up the process.

  36. 23

    This is standard procedure for pretty much all of the programs that the USPTO has implemented to streamline prosecution for interested applicants.

    2) This program will be a bust.

    I have no idea why anyone would be so troubled by it.

    1) The sky will not fall.

    My personal experience is that USPTO Examiners tend to be reasonable with their restriction requirements, both inside and outside of the context of special programs such as this one.

    4) Smart attorneys… will not go near this program.

  37. 22

    Les: If its a good idea to discuss 20 claims before a FOAM, why wouldn’t it be a good idea to discuss 200 before a FOAM.

    According to the MPEP, any applicant may request a pre-exam Interview, which may be granted at the discretion of the Examiner. So eat your heart out, Les.

    You have to agree not to traverse any restriction requirement that might be made in the future sight unseen in order to request the interview. Yeah, sign me up for that.

    This is standard procedure for pretty much all of the programs that the USPTO has implemented to streamline prosecution for interested applicants. I have no idea why anyone would be so troubled by it. My personal experience is that USPTO Examiners tend to be reasonable with their restriction requirements, both inside and outside of the context of special programs such as this one.

  38. 21

    Predictions:

    1) The sky will not fall.

    2) This program will be a bust.

    3) The arbitrary levels are indeed arbitrary (see predictions 1 and 2).

    I would be more worried about the 3 independent claims limitation. Let’s engage a quick thought experiment: you start with 1 independent and 19 dependent (and just for jakes, each a single level dependency). Your independent claim is rejected, but all other claims are allowed if rewritten in independent form.

    Now what?

    4) Smart attorneys have already figured this out and will not go near this program (see predictions 1 and 2).

  39. 20

    By the way, Dennis fixed his post without mentioning it, so now it makes me look silly. Not that I needed much help with that.

  40. 19

    It may seem that way, but ending that sentence in “the” would have been grammatically

  41. 17

    It has been explained to you and others many times that the examiner gets a fixed amount of time to dispose of the application, regardless of the number of claims.

    I’ve explained to you and others many times that when excess claims fees are paid on the theory that “more claims requires more examining resources,” neither the applicant nor the examiner gets any additional resources (i.e. time). And yes, I’ve whined about that many times. My whining hasn’t changed anything though.

    But if you know that paying $1,000, $2,000, $3,000, etc. in excess claims fees doesn’t get your client any more of the examiner’s time, wouldn’t it make sense to counsel your client that while you can only file 20 claims for a case that you may want to pre-interview, it’s still more than what they got before?

    “Who said the interview had to be limited to an hour or that it had to be done in one sitting?”

    If somebody pays you $1,000, how much of your time do they get?

    If you pay about $1,000 to file an application with 20/3 claims, you get, on average, about 20 hours of an examiner’s time. Should you get 25? 30? How much time should you get?

    Can I get 20 hours of your time, Les, for $1,000?

    You know how the system works. You know what the rules are. You might be a little more productive figuring out how to get the most you can within the system and rules we have instead of constantly whining that you want more. You’re not going to get more. Get over it.

  42. 16

    Claims are all directed to a single invention?

    This is often/usually a very subjective determination with a lot of examiner discretion, isn’t it?

  43. 15

    If its a good idea to discuss 20 claims before a FOAM, why wouldn’t it be a good idea to discuss 200 before a FOAM. Who said the interview had to be limited to an hour or that it had to be done in one sitting?

    The application with 200 claims represents a lot of money in “excess claim fees” and should get premium treatment, not second class treatement.

  44. 14

    Take a look at the PTO forms for this program. You have to agree not to traverse any restriction requirement that might be made in the future sight unseen in order to request the interview. Yeah, sign me up for that.

  45. 13

    What if I don’t own a computer or know how to upload a photo to facebook or video to youtube or don’t what to comply with all the id requirements to get a pki certificate? The arrogance of the office on this point is astonishing.

  46. 12

    In order to make the process useful, some limit on the number of claims to be discussed at the pre-FAOM interview makes sense. Do you really think a half hour or hour interview to discuss 200 claims will be as productive as the same amount of time to discuss 20 claims?

    So the PTO chose 20/3 as the number, which coincidentally is the number of claims applicants get with the basic filing fee.

    Not good enough for Les though.

    You’re tiresome.

  47. 11

    I don’t recall having to pay anything to get my PKI certificate. Not sure what the obstacle is for a solo inventor. Apply for a customer number, get a PKI certificate associated with that customer number, and start using EFS. It’s a fairly simple system. If you’ve ever uploaded a photo to Facebook or a video to YouTube, you can use EFS.

    But I guess it’s much easier to whine endlessly on blogs.

  48. 9

    Ned Good job here, PTO. This should go a long way to resolving the BRI problem

    It may help a little bit, but I doubt “it’ll go a long way.” To the extent an applicant’s failure to draft readily understood claims is a contributing factor to the backlog, those applicant’s applications will continue to remain a problem. Why? Because those applicants will typically have no interest in this program.

  49. 8

    You must electronically file the request… so, if you are a solo inventor without a PKI certificate, you are disadvantaged over your competing large corporation… that’s fair….’cause large corporations need all the advantages over the little guy they can get.

  50. 7

    Why exactly does having 21 claims make you ineligible? There is no advantage to discussing more complicated applications prior to the first office action?

    Arbitrary rules for arbitrary reasons…

  51. 6

    Really, because it appears to me that the word “a” is your favorite way to end a

  52. 5

    what, you do know what this means? If the applicant limits the claims in response to the interview, the examiner may have to conduct a fresh search. But, this is exactly what I have been advocating for some time.

  53. 4

    I’d just like to mention that the word “the” is my favorite way to end a

  54. 3

    I agree with Ned. Maybe now he’ll stop calling for another round of prosecution.

    Of course, if you don’t avail yourself of the program, don’t bother complaining.

  55. 1

    Good job here, PTO. This should go a long way to resolving the BRI problem so that the first real examination is on the claims construed and/or limited to the invention the applicants intended to claim.

Comments are closed.