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The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Can We Talk?

By Glenn M. Strapp and Jeffrey S. Whittle

Talking to patent examiners often helps advance the examination of a patent application. Now data from the U.S. Patent and Trademark Office (“Patent Office”) show that by talking to a patent examiner prior to a first official action, an applicant is three times more likely to get a first action allowance of a patent application. A newly expanded Patent Office program makes it easier to talk to the examiner prior to initial examination. (“Full First Action Interview Pilot Program,” Kappos, David J., Director of the United States Patent and Trademark Office, May 6, 2011). The heart of the program is an “Examiner Interview” that takes place before the examiner issues a first official action, which allows the examiner and patent applicant to discuss the application, identify allowable patent claims, and shave months or years off of the time from filing of an application to receipt of an issued patent.

The new program, officially called the Full First Action Interview Pilot Program, is not entirely new. The First Action Interview Pilot Program began in April 2008, and this initial program transitioned into the Enhanced First Action Interview Pilot Program in October 2009. Those programs were limited to patent applications in specifically identified technologies, or “art units,” within the Patent Office (those art units are identified on the Enhanced First Action Interview Program website at www.uspto.gov/patents/init_events/faipp_enhanced.jsp#heading-2). Under the new full program, patent applications in all art units are eligible, provided that the applications meet other specific requirements. Unlike the previous interview pilot programs, the full program does not limit eligibility to patent applications filed before a specific date. The full program, however, remains a pilot program and is scheduled to continue only until May 16, 2012. The one-year period will give the Patent Office time to collect more data on the benefits of the full program.

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