PTO Developments INTELLECTUAL PROPERTY

USPTO Expands First Action Interview Pilot Program

On May 16, 2011, the United States Patent and Trademark Office (USPTO) implemented the Full First Action Interview Pilot Program, which expands the Enhanced First Action Interview Pilot Program to include utility applications in all technology areas and with all filing dates. As with the previous First Action Interview pilot programs, the applicant is entitled to a first action interview, upon request, before the first Office Action on the merits. This program applies to requests filed on or after April 1, 2011, and before May 16, 2012 (seePre-OG Notice). Other than expanding the program to include all technology areas and filing dates, the process is the same as that used in the Enhanced First Action Interview Pilot Program, which ended April 1, 2011.

Normally, granting an interview before first action on the merits of a new application is within the examiner’s discretion (MPEP § 713.02). Under this program, however, granting an interview becomes non-discretionary. After an applicant requests participation in the program, the examiner will conduct a prior art search and provide the applicant with a condensed Pre-Interview Communication citing relevant prior art and identifying proposed rejections and/or objections. Within one month or 30 days, whichever is longer, of the mailing or notification date of the Pre-Interview Communication, the applicant must either (1) file a request to not have a first action interview with the examiner, or (2) schedule an interview and submit proposed amendments and/or arguments. At the interview, the applicant and examiner will discuss issues related to the patentability of the claims. If agreement is not reached on all claims, then the applicant will receive a First Action Interview Office Action that includes an interview summary and that constitutes a first Office Action on the merits under 35 U.S.C. 132.

According to the USPTO, "[p]articipants in the previous First Action Interview pilots experienced many benefits including: (1) the ability to advance prosecution of an application; (2) enhanced interaction between the applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and (4) the opportunity to facilitate early allowance. Approximately 34 percent of the applications in the First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications.” Applications under the program are not advanced out of turn for examination, but most likely will be taken up in the order of its effective U.S. filing date in accordance with MPEP § 713.02.

USPTO Implements Track I of the 3-Track Examination Process

On February 4, 2011, the USPTO published a statement regarding "immediate implementation” of Track I of its 3-Track examination process. Prop. PTO Reg. § 1.102(e); 76 Fed. Reg. 6,369 (Feb. 4, 2011). The 3-Track examination process was introduced in June 2010 and was proposed to allow applicants to select the examination process that fit with their individual examination goals. Track I examination was scheduled to launch May 4, 2011 (seeFederal Register Notice), but because of budgetary concerns has been postponed indefinitely.

Track I allows for an applicant to request prioritized examination of an original utility or plant non-provisional application. Track III allows an applicant to request a delay in docketing the application for examination for a maximum period not to exceed thirty months in an original utility or plant application. In the event that an applicant does not select either Track I or Track III, an application will be examined under Track II, which is the current examination procedure.

In its February statement, the USPTO proposed limiting requests for prioritized examination under Track I to 10,000 applicants in the first year. Prop. PTO Reg. § 1.102(e); 76 Fed. Reg. 6,369 (Feb. 4, 2011). Under the proposal, an applicant must satisfy several requirements to qualify for Track I prioritization. First, an applicant must request prioritized examination for an original utility or plant application (including new continuation applications) filed on or after the implementation date of Track I. Second, the applicant must pay a fee of $4,800 ($2,400 for small entity status) to offset the costs associated with Track I and to prevent delay of non-prioritized applications. Third, the application must be filed electronically and include no more than four independent and thirty total claims. Fourth, an applicant may not request an extension of time. Any request for an extension of time will result in the termination of Track I prioritization without a refund of fees.

Once an application satisfies the requirements for Track I prioritization, it is accorded special status and placed on an examiner’s special docket throughout the entire course of examination. The application remains on the special docket until disposal of the case within a target period of twelve months. The application is disposed of when: (1) a notice of allowance is mailed; (2) a final office action is mailed; (3) a notice of appeal is filed; (4) an interference is declared; (5) a request of continued examination is filed; or (6) the application is abandoned. If an interference is declared or an appeal filed, the application will not be accorded special status during the pendency of the interference or appeal.

The USPTO dropped certain requirements that were included in its June 2010 proposal. The USPTO is not requiring that applicants perform a pre-filing search or analysis of the claims. In addition, the USPTO is not demanding that applicants request a supplemental search from a participating intellectual property granting office. Prop. PTO Reg. § 1.102(e); 76 Fed. Reg. at 6,370. Therefore, the Track I examination process offers applicants the advantage of special status without the prior art requirements imposed by the Accelerated Examination program.

USPTO Expands First Action Interview Pilot Program

On May 16, 2011, the United States Patent and Trademark Office (USPTO) implemented the Full First Action Interview Pilot Program, which expands the Enhanced First Action Interview Pilot Program to include utility applications in all technology areas and with all filing dates. As with the previous First Action Interview pilot programs, the applicant is entitled to a first action interview, upon request, before the first Office Action on the merits. This program applies to requests filed on or after April 1, 2011, and before May 16, 2012 (seePre-OG Notice). Other than expanding the program to include all technology areas and filing dates, the process is the same as that used in the Enhanced First Action Interview Pilot Program, which ended April 1, 2011.

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