FAI: Getting a Head Start in the Prosecution Foot Race

The First Action Interview (“FAI”) Pilot Program provides applicants with a head start on patent prosecution by receiving examiner feedback and an examiner interview before the issuance of an office action. In order to be eligible for the FAI pilot program, an application must:

1. Be a non-reissue, non-provisional utility application under 35 U.S.C. § 111(a) or national stage application under 35 U.S.C. § 371;
2. Contain three or fewer independent claims and twenty or fewer total claims;
3. Not contain multiple dependent claims;
4. Claim only a single invention; and
5. Not have a first Office Action on the merits as of the date Applicant requests participation in program.

After applying for the FAI program, a pre-interview communication that broadly outlines art and rejections initiates the prosecution process. The program includes an initial examiner interview (the FAI) to discuss the application before the issuance of a first office action. The pre-interview communication and interview provide valuable insight into an examiner’s initial positions and, in some cases, the interview can result in an agreed upon amendment that places the application in a condition for allowance before an office action is ever issued. If no agreement is reached during the initial interview, a non-final office action is issued and prosecution proceeds following the typical prosecution process. In some cases, an FAI application can cross the patent prosecution finish line before traditional applications have even started the race.

Through the FAI program, applicants can use the initial interview process to quickly focus their prosecution efforts to their advantage. For example, applicants who are willing to make substantive initial amendments may be able to work with the examiner to secure an allowance on a set of narrowed claims during the interview, while still pursuing the broader, original claims in a continuation application. In other circumstances, the interview might not result in an immediate allowance but still provides an opportunity to preemptively argue against cited art, to identify and respond to specific rejections, and to test different prosecution approaches and their likely outcomes. In many of these cases, particularly where the examiner agreed in principle on allowable subject matter but wants time for a further search, the Applicant can secure an allowance shortly after the first office action reaching the finish line halfway into the traditional prosecution cycle.

In addition to a head start on prosecution, the FAI program can be combined with other PTO programs and policies to further expedite and extend prosecution. Using the FAI program with the PTO’s Track One Prioritized Examination Program provides the same expedited timeline as all Track One applications while also incorporating the beneficial framework of a pre-interview communication and interview. If an application reaches a final rejection, the Applicant can use all available after final procedures, such as the After Final Consideration Pilot Program 2.0, to make additional arguments and amendments, continuing the race for a patent.

Visit the USPTO's website for additional information on the FAI Pilot Program.