The United States Patent and Trademark Office (USPTO) is initiating a pilot program in which the applicant who complies with certain requirements will receive the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then be permitted to conduct an interview with the examiner to discuss the cited prior art references prior to the first Office action on the merits (see flow chart).

The requirements for the pilot program are set forth in the notice entitled “First Action Interview Pilot Program” (available here). An interview under this pilot program would advance prosecution of the application because it would enhance the interactions between the applicant and the examiner, provide applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process, and facilitate possible early allowance.

Bio/Pharma people are SOL, though.  The pilot program is only for applications that are either (1) classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring) and assigned to an art unit in either group 2140 or 2150; or (2) classified in Class 707 (Data Processing: Database and File Management or Data Structures) and assigned to an art unit in group 2160.

Currently, granting an interview before first action on the merits of a new application is within the discretion of the examiner, who has not yet searched the case, and a showing may be required to justify the granting of the interview. See MPEP § 713.02. The pilot program provides a procedure which, if followed, makes the granting of an interview non-discretionary.

The effective date for this change in practice is: 28 April 2008.

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2 Comments

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    […] Patent Baristas added an interesting post on USPTO Rogers Pilot ProgramHere’s a small excerpt […]

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    Once again, PTO management takes a good idea that the patent bar has been asking for for years, and then implements it in a way that strips out the major value, and focuses resources on the least valuable applications.

    The Notice states that a pre-exam interview is only available for applications with no more than 3 independent claims and 20 total claims. Why limit it this way?

    There is a simple fact of patent economic life that (apparently) no one at the PTO gets. Big applications (many claims, large spec, many references) get that way for only one reason: the applicant invested a lot of money in this application to get it claimed thoroughly, described thoroughly, and prior-art-searched thoroughly BECAUSE IT’S A VALUABLE APPLICATION DIRECTED TO AN IMPORTANT INVENTION. Big applications are not acts of aggression against the PTO, they are the applications that give the public the most benefit of the patent bargain. The PTO gets proportionally much higher fees for big applications (because many more big applications generate full maintenance fee income). Big applications should receive proportionally *more* time per claim, not less.

    Big applications are almost always the ones that are most at the cutting edge, and where the examiner is most likely to not appreciate the claims or the disclosure without some hand-holding from the applicant. Big applications are the ones with the most complexity that could most benefit from some back-and-forth discussion with the applicant.

    Limiting pre exam interviews to only the *least* important applications (that is, 3/20) is another example of PTO management’s misallocation of resources because of PTO management’s lack of “professional background and experience in patent law” and lack of understanding of the economics of patents. Big applications are the ones where a little education of the examiner before examination will pay the most benefit in efficiency, by helping the examiner understand the unfamiliar language in the claims, and focus on the key feature. An interview is also the single best way I know of to help the examiner get it right the first time. It’s the only efficient way I know of to give the examiner the precise information he/she needs to do a quality job efficiently. Waiting until after the first Action (which, in 3620/3690, 70% of the time reflect complete lack of understanding by the examiner of basic terms of art and the like) to get the examiner focused is a waste for all concerned.

    Any solution to the PTO’s problems will involve passing additional claim/spec/reference fee income on to examiners in the form of additional examining time or counts.

    “Focused examination” is incredibly important to everyone, especially those applicants with important inventions. Why does PTO management take every opportunity to avoid or misdirect it?