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Patent Office Broadens "First Action Interview" Pilot Program

On May  17, 2011, the Patent Office issued a press release and guidelines that effectively permit applicants with pending applications in all art areas to request—and be granted– an interview with the Examiner prior to the first office action.  Of course, there are strings attached in terms of number of claims, restriction without traverse if multiple invention, etc. Also, upon request the Examiner – when the application is taken up for action – will issue of Pre-Interview Communication, citing relevant art from a search and indicating potential rejections or objections. Prior to the interview, the applicant must file proposed amendments and remarks, if applicant decides to proceed with the interview.

Note that this program does not decrease the time from filing to first office action, and seems to require a lot of work by both parties before any “face-to-face” discussions can occur. Since the Examiner has to both search and formulate rejections/objections prior to scheduling the interview, this sound more like an interview-by-right after a first office action  which, of course, we practitioners already have. The guidelines do guarantee that both parties will be prepared prior to the interview, and certainly that is of some value. However, if agreement is not reached, the Examiner can hand the application a “First Action Interview Office Action”. The applicant only gets 30 days to reply (“with limited extension of time”). But there are other options all along the way, so I recommend reading the detailed PTO Guidelines before jumping into this program.  Finally, I did not see that this procedure completely supplants an Examiner’s ability to grant a request for a “normal” pre-first action interview which, in my experience, many examiners in Group 1600 are willing to permit. So, apparently, both applicants and Examiners can “opt out” of this program.

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