U.S. Patent Office Initiates a First Office Action Interview Program

April 2008

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

From April 28, 2008 to November 1, 2008, the U.S. Patent and Trademark Office (Patent Office) will conduct a pilot program for non-provisional, non-reissue patent applications in certain electrical computer, digital processing and data processing fields that is designed to advance prosecution of applications and ultimately lead to allowed claims after a relatively short examination procedure.

Electronic Filing of Request
To initiate the program, an Applicant files an electronic request in an application that has not yet received an Office Action on the merits, that has no more than three independent claims and no more than twenty total claims, and that was filed on or before September 1, 2005 (electrical computers and digital processing) or November 1, 2006 (data processing).

Pre-Interview Communication
When the application is examined, the Patent Office Examiner conducts a prior art search and mails a Pre-Interview Communication to the Applicant. Within one month or thirty days, whichever is longer, from the mailing of the Pre-Interview Communication and prior to the mailing of a First Office Action on the Merits, the Applicant can conduct an interview with the Examiner to attempt to resolve issues raised by the Examiner or opt not to conduct an interview with the Examiner and file an amendment or arguments in response. Currently, interviews prior to mailing of the First Office Action are discretionary and rarely granted.

Interview and Response to First Office Action
If the Applicant and Examiner reach agreement during the interview, the Examiner issues a Notice of Allowance promptly after the interview. If no agreement is reached during the interview, the Examiner may provide the Applicant with a courtesy copy of the summary of the interview and First Office Action prior to the official mailing of the Action. The Applicant will be required to reply to the Office Action, after official mailing from the Patent Office, within one month or thirty days, whichever is longer, with limited extensions of time available. Failure to reply to the Office Action in this limited timeframe will result in abandonment of the application.

Value of the Program
Interviews with Examiners, particularly during the initial phases of examination, can be invaluable ways to resolve issues and advance prosecution of applications, which benefit both the Applicant and the Patent Office. Under this pilot program, the interview is granted early, but participants should be prepared to respond to communications promptly. Depending upon the success of this program, one can hope that the Patent Office will develop and initiate similar programs for other fields.

Patent Office Request Forms and Further Information
The Patent Office has developed a resource page on its website (www.uspto.gov) specifically dedicated to this pilot program. The resource page includes further information on eligibility, access to forms, tips to consider for preparing for the interview, and more.

Overview

April 2008

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

From April 28, 2008 to November 1, 2008, the U.S. Patent and Trademark Office (Patent Office) will conduct a pilot program for non-provisional, non-reissue patent applications in certain electrical computer, digital processing and data processing fields that is designed to advance prosecution of applications and ultimately lead to allowed claims after a relatively short examination procedure.

Electronic Filing of Request
To initiate the program, an Applicant files an electronic request in an application that has not yet received an Office Action on the merits, that has no more than three independent claims and no more than twenty total claims, and that was filed on or before September 1, 2005 (electrical computers and digital processing) or November 1, 2006 (data processing).

Pre-Interview Communication
When the application is examined, the Patent Office Examiner conducts a prior art search and mails a Pre-Interview Communication to the Applicant. Within one month or thirty days, whichever is longer, from the mailing of the Pre-Interview Communication and prior to the mailing of a First Office Action on the Merits, the Applicant can conduct an interview with the Examiner to attempt to resolve issues raised by the Examiner or opt not to conduct an interview with the Examiner and file an amendment or arguments in response. Currently, interviews prior to mailing of the First Office Action are discretionary and rarely granted.

Interview and Response to First Office Action
If the Applicant and Examiner reach agreement during the interview, the Examiner issues a Notice of Allowance promptly after the interview. If no agreement is reached during the interview, the Examiner may provide the Applicant with a courtesy copy of the summary of the interview and First Office Action prior to the official mailing of the Action. The Applicant will be required to reply to the Office Action, after official mailing from the Patent Office, within one month or thirty days, whichever is longer, with limited extensions of time available. Failure to reply to the Office Action in this limited timeframe will result in abandonment of the application.

Value of the Program
Interviews with Examiners, particularly during the initial phases of examination, can be invaluable ways to resolve issues and advance prosecution of applications, which benefit both the Applicant and the Patent Office. Under this pilot program, the interview is granted early, but participants should be prepared to respond to communications promptly. Depending upon the success of this program, one can hope that the Patent Office will develop and initiate similar programs for other fields.

Patent Office Request Forms and Further Information
The Patent Office has developed a resource page on its website (www.uspto.gov) specifically dedicated to this pilot program. The resource page includes further information on eligibility, access to forms, tips to consider for preparing for the interview, and more.

Back to the Top