The enhanced pilot program may be your ticket to a first action allowance
September 2010
CIPA Journal
Authored by Erin M. Sommers, Ph.D. and Anthony C. Tridico, Ph.D.
In April 2008, the US Patent and Trademark Office ('USPTO') instituted a First Action Interview Pilot Program to provide four stated benefits to patent applicants:
That pilot program was upgraded in October 2009 to the Enhanced First Action Interview Program ('EFAIPP'), which was recently extended for an additional six months until 1 October 2010.2 What began, no doubt, as an attempt to decrease USPTO backlog is a boon for applicants. EFAIPP provides applicants with face-to-face access to the examiner before receiving a first Office Action on the merits ('FOAM'). Under standard USPTO procedure, a pre-FOAM interview is strictly discretionary and—given an examiner's heavy caseload—unlikely. As a result, EFAIPP offers both applicants and the USPTO the opportunity to resolve issues of patentability early in the examination of an application, expediting prosecution and reducing backlog. The best news of all: the USPTO is considering extending this program to all applications.
Although the flowcharts provided by the USPTO3 make the program appear circuitous, when an applicant chooses to enter EFAIPP and stays the course, what follows is a series of straightforward transactions between the applicant and the USPTO. It is only when an applicant decides to stop participating in the program or is faced with a Restriction Requirement or Notice of Non-Compliance that the process becomes more involved.
Until the USPTO permanently expands the program, an applicant should first determine which applications meet the eligibility requirements. To be eligible for entry into EFAIPP, the application must be a non-reissue, non-provisional (including continuation or divisional applications), or a PCT application that entered the national stage in the US. The application must also have been filed on or before a certain date cut-off and be a member of a designated art unit (Table 1).
Table 1. Filing dates and art units eligible for EFAIPP.4
Application filed on or before: | Assigned to art unit: |
November 1, 2006 | 161X |
October 1, 2006 | 1795 |
February 1, 2008 | 215X and 216X |
July 1, 2008 | 244X and 245X |
June 1, 2007 | 2617 |
May 1, 2008 | 2811-2815, 2818,2822-23,2826,2891-2895 |
December 1, 2007 | 3671 |
January 1, 2008 | 3672 |
November 1, 2007 | 3673 |
February 1, 2008 | 3676 |
July 1, 2007 | 3677 |
November 1, 2007 | 3679 |
May 1, 2006 | 3735 |
April 1, 2007 | 3736 |
December 1, 2006 | 3737 |
August 1, 2006 | 3768 |
December 1, 2006 | 3739 |
September 1, 2007 | 3762 and 3766 |
September 1, 2006 | 3769 |
The filing date for eligibility purposes is the actual date of filing for a non-provisional or continuation application, whereas the international application filing date is the relevant date for national stage entry of PCT applications. In other words, when determining, for example, whether a continuation application is eligible, the filing date is not the earliest effective filing date but the actual filing date of the instant application.
Once an applicant has determined that the application is eligible for participation in EFAIPP, she must file a Request for First Action Interview.5 That Request, as well as every additional EFAIPP paper, must be filed electronically. Although the Request must include a statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication, no additional fees are required for EFAIPP.
Finally, the application must be directed to a single invention, containing three or fewer independent claims and 20 or fewer total claims, none of which can be multiply dependent.6 If the application contains more claims than allowed by the program, applicants may file a preliminary amendment to bring the claim count to within EFAIPP's limits.
Following electronic submission of a Request for First Action Interview, the USPTO will conduct a prior art search for the claimed invention. In consideration of the art, the USPTO may determine that the application is in condition for allowance as is or with minor claim amendments. At this point, the USPTO will either issue a Notice of Allowance or contact the applicant and conduct an interview to discuss possible amendments to the claims to bring them into condition for allowance.
If the USPTO does not find that the application is in condition for allowance at this point, it will issue a Pre-Interview Communication and Notice of References Cited. The Pre-Interview Communication is a pared down Office Action similar to a search report issued by WIPO or the EPO that contains prior art references cited, as well as rejections and objections to the claims. The Pre-Interview Communication will set a period of one month or 30 days, whichever is longer, to respond. That time period can be extended by only one month.
In response to the Pre-Interview Communication, an applicant can schedule a First Action Interview, accompanied by proposed amendments or arguments and a possible date for the interview. The First Action Interview must be scheduled within 60 days or two months, whichever is longer, from the request for an interview.
The amendments and arguments included with the request are only proposals (and must be clearly marked as such) and will not automatically be entered as a matter of right. Instead, depending on the outcome of the First Action Interview, the USPTO may enter the proposed amendments as-filed or with agreed upon modifications if entry will advance prosecution. But even if the examiner denies entry of the proposed amendments, the amendments and arguments become part of the official file. As a result, proposed amendments that may not have become part of the record under traditional interview situations will now become part of the record and should be carefully considered for potential estoppels or claim construction ramifications.
Moreover, after the interview, and regardless the outcome, the examiner must develop the record and issue an Interview Summary that includes all proposed amendments and arguments, as well as a description of the content of the interview. Consequently, an applicant must balance safeguarding the prosecution history with the USPTO's imperative that an applicant be prepared to fully discuss the prior art of record, any relevant interview talking points, and the rejections with the intent to resolve all outstanding issues of patentability at the First Action Interview.7
At the conclusion of the First Action Interview, if an agreement is reached, the examiner may enter the proposed amendments, prepare an Interview Summary, and issue a Notice of Allowability. If no agreement is reached, the examiner will prepare an Interview Summary and issue a First Action Interview Office Action, which in this situation becomes the FOAM in the application and ostensibly ends EFAIPP. The application re-enters a typical prosecution pathway, following USPTO policy and procedure.
Minor (or maybe major) detours on the EFAIPP pathway notice of non-compliant first action interview request or restriction requirement
Two situations may arise that will cause an application to take a slight detour from the EFAIPP route described above. These include a Notice of Non-Compliant First Action Interview Request or a Restriction Requirement. The first is minor, and as long as an applicant can bring the Request into compliance, the application will be quickly returned to EFAIPP.
The second situation, a Restriction Requirement, may cause a greater obstacle to continued participation in EFAIPP. If the USPTO determines that the application is directed to more than one invention, it will restrict the application pursuant to current restriction practice. But, here is the rub, unlike in typical prosecution, an applicant can only make an election without traverse to remain in EFAIPP and proceed to the Pre-Interview Communication stage. Otherwise, if the applicant believes that the restriction is improper or simply wants to preserve the right to challenge the restriction, a minor detour becomes a major roadblock, and the application becomes ineligible for participation in EFAIPP.
Voluntary termination of EFAIPP Filing a request not to have an interview or filing a reply under 37 C.F.R. § 1.111 in response to the pre-interview communication
Applicants have two other options for responding to the Pre-Interview Communication besides scheduling a First Action Interview. First, an applicant can file a Request to Not Have a First Action Interview. This waives the First Action Interview, and the USPTO will issue a First Action Interview Office Action in due course. Applicants who were caught off guard by the prior art cited in the Pre-Interview Communication or who simply desire a slower prosecution may opt for this route. The only caveat is that although no interview will be held and the prosecution appears to revert to standard USPTO examination, the shortened period for response still applies. Failing to respond at all to the Pre-Interview Communication effectively does the same thing as a Request to Not Have a First Action Interview, and the Office will issue a First Action Office Action in due course.
Applicants who believe that an interview is unnecessary to resolve the rejections in the Pre-Interview Communication may find that the second option to terminate EFAIPP is preferable. Because the Pre-Interview Communication may provide sufficient notice of the rejections and objections, an applicant, instead of scheduling or waiving the interview, can file a complete reply to the Pre-Interview Communication. By doing so, the applicant accepts the Pre-Interview Communication as the FOAM and acknowledges that any subsequent Office Action may be final according to standard USPTO examination procedure. This option may be especially attractive to applicants who want better control over the record than an interview with its proposed amendments, arguments, and Interview Summary may create.
With an approximately 50% first-action allowance rate, a wide range of participating art units, and expedited prosecution, it is easy to see why the program has been so popular. However, not all applications are well suited to the program. For example, applications covering products early in development may, of course, benefit from a slower prosecution to ensure that the claims that ultimately issue cover the commercial embodiment. Likewise, applicants who closely monitor their competitors may not want to rush into an early allowance only to find themselves with a patent that is not broad enough to cover their competitors' products.
But several other situations exist that mesh nicely to EFAIPP's aims and increase the chance for a first-action allowance. In general, EFAIPP may offer the perfect alternative to the USPTO's Accelerated Examination procedure.8 In contrast to the extensive information that applicants are required to provide under Accelerated Examination, EFAIPP does not even require that an Information Disclosure Statement ('IDS') be filed before requesting entry to the program.9 As a result, applicants who want to expedite prosecution without the potential landmines of Accelerated Examination should consider EFAIPP as an advantageous alternative.
Applications that relate to difficult or complex technology may also benefit from EFAIPP. A face-to-face interview early in prosecution not only provides an applicant with the chance to address the prior art and rejections, but also offers the applicant a chance to highlight the patentable invention and educate the examiner about the invention and the technology. Discussing the invention with the examiner sooner in the examination process ensures that the rejections are on point and not simply a result of a lack of understanding or clarity with regard to the subject-matter of the invention.
EFAIPP is also good match for applications where applicants are familiar with the prior art. In cases where applicants have conducted a prior art search, they can likely develop a strong preemptive strategy for patentable claims to facilitate a first action allowance. In addition, continuation or divisional applications where most of the issues were addressed in an allowed parent application may also be a good fit for EFAIPP. In this situation, a First Action Interview could quickly clear up the limited remaining issues.
Because 1 October 2010 is soon upon us, applicants should take stock of their patent application portfolios and carefully consider which applications are eligible and which of those are well suited for EFAIPP. After determining which applications to pursue, applicants should file any necessary preliminary amendments, IDSs, and the Request for First Action Interview as soon as possible. And even if you miss the quickly approaching deadline, do not lose faith. There is a good chance that the USPTO will continue the program in some form in the future, so keep your ears to the ground. The reward could be a first-action allowance.
1 1347 Off. Gaz. Pat. & Trademark Office 173 (Oct. 20, 2009).
2 link no longer available
3 www.uspto.gov/patents/init_events/fai_enhanced_flowcharts.jsp.
4 www.uspto.gov/patents/init_events/faipp_enhanced.jsp#heading-4. Information about the subject matter handled by each art unit can be found at www.uspto.gov/patents/resources/classification/art/index.jsp.
5 PTO/SB/413C
6 If more than one invention is present in the application, the USPTO will issue a Restriction Requirement. See infra.
7 www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_talking_points.pdf includes a list of suggested talking points for the interview.
8 For information on the USPTO's Accelerated Examination procedure, visit www.uspto.gov/patents/process/file/accelerated/index.jsp. Note, EFAIPP does not advance applications out of turn, it only seeks to expedite prosecution once the case is taken up for examination.
9 Applicants are reminded that Rule 56 still applies to EFAIPP applications. The authors caution that participants in EFAIPP should not wait to file an Information Disclosure Statement because of the likelihood of obtaining a Notice of Allowance earlier rather than later in prosecution, foreclosing submission of an IDS as a matter of right.
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