Experience with the USPTO’s First Action Interview Program

On May 5, 2011, the United States Patent and Trademark Office (“the Office”) kicked off a new program intended to give applicants and examiners an opportunity to discuss the substance of a patent application before a formal, written examination report is mailed to the applicant.[1] Dubbed the First Action Interview (FAI) Pilot Program, it requires that the applicant electronically file, at least one day before the first action on the merits is mailed, a Request for First Action Interview.[2] The Request entitles the applicant to an interview with the examiner before mailing of the first action.[3] The examiner, in turn, provides the applicant with a pre-interview communication before the interview.[4] This communication is essentially an abbreviated office action, citing to sections of references that the examiner finds relevant to elements of the pending claims.[5]

The goal of the FAI Program is to facilitate communication between the applicant and examiner, so that the parties have an opportunity to come to agreement on the claims more rapidly and efficiently.[6] In order to encourage participation, there are no additional Office fees associated with enrolling.[7] However, eligibility for the program is limited to non-reissue, non-provisional utility applications or national stage applications filed with no more than 3 independent and no more than 20 dependent claims.[8] Further, there must be no multiple dependent claims, and the claims must be directed to a single invention.[9]

Our firm has handled over 150 patent applications using the FAI Pilot Program. Consequently, we believe that we have a unique perspective as to its strengths and weaknesses, as well as how an applicant can best take advantage of the program. This article provides an overview of the program and then discusses some of our experiences with it.

As an initial matter, it is our belief that early, frequent communication between the applicant and the Office tends to expedite prosecution. For some office actions, it can be difficult to decipher why the examiner has rejected claims. The examiner may have reasonable grounds for the rejection. However, the examiner may base these rejections on interpretations of the claims and interpretations of the cited references that are significantly different from that of the applicant. In some cases, the grounds are not made clear by the office action, or may be buried by the formalities of the action. Additionally, applicants may prefer to file concise office action responses in order to reduce the likelihood of any patent that issues from the application being subject to prosecution history estoppel. In some cases, this results in the applicant and examiner talking past one another. An interview brings the parties to the table and gives them an opportunity to discuss the merits of the application openly in plain English.

Figure 1 

A flow chart depicting the FAI process is shown in Figure 1. This is an abbreviated version of the Office’s official flow chart,[10] and focuses on the most-traversed paths through prosecution before, during, and after the first action interview. The flow chart of Figure 1 assumes that all papers are timely and properly filed by the applicant, and that the Office does not restrict the claims.

As noted above, the applicant enrolls in the FAI Pilot Program by filing a Request for First Action Interview before the first action on the merits. We recommend filing the Request with the application itself, though the Request can be filed at any time up to a day before the first action on the merits is mailed. When the application comes up for examination, the examiner conducts a search and may either allow the claims, or reject some or all of them.[11] If the claims are allowed, the Office mails a notice of allowance.

If the claims are rejected, the examiner will provide a Pre-Interview Communication. This mailing takes a form similar to that of a claim chart, and maps the cited references to claim elements. Unlike a full office action, however, much of the standard boilerplate is omitted. The mailing date of the Pre-Interview Communication sets a 30-day time period for the applicant’s response, which is extendable for another 30 days.[12]

In response to the Pre-Interview Communication, the applicant should file an Applicant Initiated Interview Request form, with a proposed date and time for the interview, as well as proposed claim amendments and/or arguments.[13] The proposed amendments and remarks must be clearly labeled as
“proposed” in the header or footer of each page.[14]

The interview must be conducted within 60 days of this filing.[15] In order to expedite the scheduling process, we recommend contacting the examiner before filing the Applicant Initiated Interview Request form, to come to an agreement on when the interview will take place.

The interview should be, in substance, no different from any other examiner interview.[16] If the participants agree that the claims (in their original form or amended as proposed by the applicant) are allowable, the Office will enter the proposed amendments and mail a notice of allowance.[17] Otherwise the Office will mail a First Action Interview Office Action along with an interview summary.[18] This office action is considered the first action on the merits, and the applicant has two months to file a response.[19] Alternatively, the applicant can waive receipt of the First Action Interview Office Action by requesting that the proposed amendments and remarks be converted to a formal reply.[20]

Regardless of the path taken to reach this point, if the applicant receives a First Action Interview Office Action rather than a notice of allowance, normal prosecution continues. In other words, the applicant then must file a response to this first office action, and any subsequent office action may be made final.[21]

We believe that the First Action Interview Pilot Program is beneficial to applicants, and we have recommended its use to numerous clients. Nonetheless, the program is not perfect. Some examiners to whom we have spoken freely admitted that they do not fully understand the procedural aspects of the program, and that they were not adequately trained in its operation. FAI applications are still relatively rare, so few examiners have substantial experience with the program. Below, we discuss a handful of difficulties and odd experiences that we have had with FAI procedures.

·         Blank Pre-Interview Communication. On one occasion we received a Pre-Interview Communication with no grounds for rejecting the claims. Provided with no position to rebut, we called the examiner and requested a properly formed Pre-Interview Communication, and that the time period for responding be reset.

·         Pre–Interview Communication in PAIR as a First Action Interview Office Action. In this case, the Office mailed a First Action Interview Office Action instead of a Pre-Interview Communication. This muddied the file history of the application and could have potentially resulted in the applicant losing an opportunity to conduct the interview. Therefore, this situation required a call to the Office in order to have the status of the application set properly.

·         Non-Final Office Action mailed instead of a First Action Interview Office Action. On numerous occasions we have not received a First Action Interview Office Action after conducting the interview. In some cases, we have received a non-final office action instead. This is typically not a problem, because the First Action Interview Office Action is ostensibly a non-final office action, albeit with a shorter response period. We typically just respond to the non-final office action within the usual three-month deadline.

·         Final Office Action mailed instead of a First Action Interview Office Action. On the other hand, receiving a final office action in lieu of a First Action Interview Office Action is problematic because the applicant should have one more bite at the apple. In these circumstances, we typically call the examiner and request that the finality of the office action be withdrawn.

Perhaps the most ambiguous aspect of the FAI program is how the program would address a scenario where the applicant or examiner introduces new proposed amendments during the interview, and where the examiner wishes to consider the amendments further. The FAI program does not explicitly allow for the applicant to submit updated proposed claims. In a conversation with the Office’s Patent Legal Administration group, however, we have been told that the applicant and examiner can agree to have the applicant file a supplemental set of proposed amendments and to continue the first action interview after the examiner has a chance to consider those amendments. In our experience, some examiners have agreed to this process, but others have not. In situations where the examiner will not allow submission of supplemental proposed amendments, the applicant then has to respond to the First Action Interview Office Action with the new amendments, rather than have the examiner consider the updated claims in a more timely fashion. Thus, unlike a traditional examiner interview, which usually takes place after the mailing of an office action but before the applicant files a response, the applicant may not be able to file a response that reflects the outcome of the interview until after the next office action is mailed.[22]

Despite these implementation flaws, we still believe that the FAI program is generally beneficial to applicants and worth consideration. While our experience is still somewhat anecdotal at this point, we believe that prosecution time and cost can be reduced by conducting an early interview, because both the applicant and the examiner enter the interview process knowing that the other is willing to discuss the merits of the application in detail. Also anecdotal is our experience that some applications in which an FAI request is filed seem to be examined more quickly than non-FAI applications. Thus, using the FAI program may be more cost-effective than the Accelerated Examination or Prioritized Examination programs.[23]

Additionally, applications directed to complex technologies may benefit from an early interview so that the applicant has an opportunity to explain the invention to the examiner. Further, applications with relatively focused claims may especially benefit from the program, as the program may help facilitate quicker allowance.

Despite its flaws in execution, the FAI program is still a worthwhile option for applicants seeking early communication with the Office. With no additional Office fees required, filing a Request for First Action Interview with each patent application may become the default for some entities.

© 2014 McDonnell Boehnen Hulbert & Berghoff LLP

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