INVENTIVE STEP

The PTO has expanded the program where it grants examiner interviews to applicants prior to the first Office Action.  Normally, an interview prior to a first Office Action is within the examiner’s discretion.  This pilot program, set to run for one year, makes such interview mandatory when requested by the applicant.

Requirements

If an applicant desires such an interview, he must file a request electronically.  When the application comes up for examination, the examiner will conduct a prior art search and submit to the applicant a Pre-Interview Communication identifying rejections or objections.  The applicant is then given one month (extendable by one additional month) to decide to (1) cancel the interview request, (2) respond to the Pre-Interview Communication as if it were the first Office Action, or (3) schedule the interview.  The interview must take place within 2 months of the mailing date of the Pre-Interview Communication.  If the interview is scheduled, the applicant must file a proposed amendment or remarks.  These amendments and remarks will not be entered in the record, but will be used for discussion during the interview.

If the applicant decides not to have the interview or if agreement is not reached on all claims during the interview, the examiner will issue a First Action Interview Office Action which will provide a one month period for reply (extendable by one additional month).

To qualify for the program, the application must contain, or be amended to contain, no more than 3 independent claims, 20 total claims, and no multiple dependent claims.  The claims must be directed to a single invention or the applicant must make election of one invention without traverse.  The request must be filed at least one day prior to the date the first Office Action is entered into PAIR.  The application will not be advanced out of turn and no fee is required to participate in the program.

Patently-O reports that under the PTO’s prior Pre-Office Action Interview pilot program about 1/3 of applications were allowed on the first Office Action (compared to about 11% of applications outside the program). 

Early oral communication with the examiner can only be helpful in assisting the examiner’s understanding of the invention, the prior art, and the claimed features that make the invention patentable.  Too often, the first Office Action exposes the examiner’s misunderstanding of these issues.  The first reply is used to correct these misapprehensions and the real negotiation over the patentability of the claims does not begin until the second, usually final, Office Action.  Thus, this is another reason for the high number of RCEs.  

There seems to be little downside to this program, other than the shortened reply periods for responding to PTO communications.  This is another step in the right direction for the Kappos regime.  Now, if we can just get the Administration to fix the problems with the Patent Reform bill . . .

Details of the pilot program are available here.

This entry was posted on May 17, 2011 at 9:12 am and is filed under US Patent & Trademark Office. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.