Type: Law Bulletins
Date: 07/18/2011

USPTO Expands Pre-Examination Interview Program

In May of 2011, the United States Patent & Trademark Office announced that its initial pilot program relating to pre-examination interviews was being enhanced and extended through May 16, 2012.  Under the First Full Action Interview program, a patent applicant has the right to request (and have granted) an interview with the patent examiner assigned to their case before a first substantive official action on the merits is issued.  Unlike the accelerated examination process, this program does not advance or accelerate the application’s order of pendency with the Patent Office.  It is, however, available to applicants at no additional cost, thereby making it much more economically attractive than the more expensive accelerated examination program.

To be eligible to participate in the pre-examination interview program, the applicant’s pending patent application must have no more than three independent claims and twenty total claims (all of which must be directed to a single invention).  During the interview, the examiner will provide the applicant with a listing of the various prior art references he or she has identified as being relevant to the patentability of the claimed invention, and provide an explanation of how these references can be relied on (if appropriate) to reject the pending claims. 

Depending on how the interview goes, the examiner will either allow the case or subsequently issue an office action rejecting the claims (likely based on the grounds discussed during the interview).  It should be noted that while applicant’s typically receive three months (as a matter of right) to respond to a first substantive office action, applicants receiving an office action after participating in the interview program only receive one month.  The rationale for this shortened period is that the examiner has already explained to the applicant the reasons why the pending claims are rejected, and therefore the applicant should not need as much time to formulate a response.

Before this program was instituted, roughly 11% of applications received first-action allowances.  When utilizing this program, however, the Patent Office has reported that this number increases to about 1/3 of all applications. 

For more information about this issue, please contact Ryan White or any member of Taft's Intellectual Property Practice Group.

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