By: William G. Kratz, Jr. 

The U.S. Patent and Trademark Office has initiated a „First Action Interview“ pilot program. This program may be especially useful for the applicant who wants to advance the prosecution of a patent application and facilitate a possible early allowance. When all requirements are satisfied, this program enables the applicant to receive a special Pre-Interview Communication from the U.S. Patent and Trademark Office before the Examiner issues a first Office action on the merits. The Pre-Interview Communication provides the results of a prior art search conducted by the Examiner. When all requirements are satisfied, the applicant is permitted to conduct an early interview after receipt of the Pre-Interview Communication. This early interview could advance prosecution of a patent application for several reasons: (1) it could facilitate communication between the applicant and the Examiner at the first stages of the prosecution process; (2) it could provide an opportunity to discuss a variety of different patentability issues and resolve such issues early in the prosecution process; and (3) it could perhaps lead to an early allowance.

When the requirements of the „First Action Interview“ program are not satisfied, the applicant can still request an interview prior to a first action on the merits. However, the granting of such an interview before a first action on the merits of a new application is within the discretion of the Examiner who may not yet have done a prior art search for the case. When all requirements of the „First Action Interview“ program are satisfied, the granting of the early interview becomes non-discretionary.

If an applicant wants to participate in the „First Action Interview“ pilot program, and that applicant is eligible to participate, the request must be filed electronically.–click here to read more—