Patent Office Announces New First Action Interview Program
On May 16, 2011, the United States Patent and Trademark Office (USPTO) issued a press release announcing that it was initiating a full first action interview pilot program, which will allow any patent applicant to submit a request to begin substantive prosecution on his or her application with an interview with the patent examiner, rather than a written office action. It is expected that starting prosecution with an interview, as opposed to a written office action, will allow the applicant to more quickly get an understanding of the likely scope of the protection which can be obtained, if any. This is important commercially, and could result in lower prosecution costs. It is also consistent with our experience on interviews in general, which can often lead to much more constructive interactions with patent examiners than are possible based only on written communications.
There are some requirements to participate in the program. For example, a first action interview will not be granted on a patent application which claims more than one invention. However, unlike in past programs, if an application does not meet the requirements of this program, it can almost always be amended so as to be allowed to participate. For example, if a patent application which claims more than one invention is amended to claim only a single invention, then a first action interview can proceed with the amended application. As a result, given the potential benefits, we recommend all clients with patent applications that have not received a written office action consider making a request to start prosecution of their application with an interview under the new program.