2015-16846. United States Patent and Trademark Office and Japan Patent Office Collaborative Search Pilot Program

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is initiating a joint Work Sharing Pilot Program with the Japan Patent Office (JPO) to study whether the exchange of search results between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. In the pilot program, each office will conduct a prior art search for its corresponding counterpart application and exchange the search results with the other office before either office issues a communication concerning patentability to the applicant. As a result of this exchange of search results, the examiners in both offices may have a more comprehensive set of references before them when making their initial patentability determinations. Each office will accord special status to its counterpart application to first action. First Action Interview (FAI) pilot program procedures will be applied during the examination of the U.S. application and make the search results of record in the form of a Pre-Interview Communication.

DATES:

Effective date: August 1, 2015.

Duration: Under the United States-Japan Collaborative Pilot (US-JP CSP) program, the USPTO and JPO will accept petitions to participate for two years from its effective date. During each year, the pilot program will be limited to 400 granted petitions, 200 granted petitions where USPTO performs the first search and JPO performs the second search, and 200 granted petitions where JPO performs the first search and USPTO performs the second search. The offices may extend the pilot program (with or without modification) for an additional amount of time, if necessary. The offices reserve the right to terminate the pilot program at any time.

FOR FURTHER INFORMATION CONTACT:

Daniel Hunter, Director of International Work Sharing, Planning, and Implementation, Office of International Patent Cooperation, by telephone at 571-272-8050 regarding the handling of any specific application participating in the pilot. Any questions concerning this notice may be directed to Joseph Weiss, Senior Legal Advisor, Office of Patent Legal Administration, by phone [phone]. Any inquiries regarding this pilot program can be emailed to [e-mail].

SUPPLEMENTARY INFORMATION:

I. Background

The USPTO is continually looking for ways to improve the quality of issued patents and to promote work sharing between other Intellectual Property (IP) Offices throughout the world. The USPTO has launched several work sharing pilot programs in recent years (e.g., numerous Patent Prosecution Highway Pilot Programs). In furtherance of promoting interoffice work sharing, the USPTO and JPO will cooperate in a study to determine whether work sharing between IP offices by exchanging search results, where one office will have the benefit of the other office's search results before conducting a search, increases the efficiency and quality of patent examination. This exchange of search results would occur prior to making determinations regarding patentability. Work sharing benefits applicants by promoting compact prosecution, reducing pendency, and supporting patent quality by reducing the likelihood of inconsistencies in patentability determinations (not predicated upon differences in national patent laws) between IP offices when considering corresponding counterpart applications.

Currently, an application filed in the USPTO with a claim of foreign priority may have a search report and art cited by the foreign office in the priority application provided to the applicant during the U.S. application's pendency. After review of the search report and cited art, the applicant may submit an Information Disclosure Statement (IDS) in the U.S. application to provide the information to the USPTO. Often, this submission occurs after examination on the merits is already underway in the U.S. application. Upon evaluation of the search report and cited art, the U.S. examiner may determine that the art cited by the foreign office is relevant to patentability and merits further examination before making a final determination on patentability. The delay caused by further examination results in additional costs to an applicant and the USPTO that could have been avoided if the U.S. examiner was in possession of the foreign office's search results before commencing examination of the application. Furthermore, in light of the various expedited examination programs currently in place, the potential exists that a U.S. application may reach final disposition before an applicant is in receipt of a foreign office's search report. Work sharing between intellectual Property (IP) offices in the form of an exchange of search results may increase efficiency and promote patent examination quality by providing the examiner with both offices' search results when examination commences. In order to study the benefits of the exchange of search results between offices, current USPTO examination practice would need to be modified to conduct a search and generate a search report, without issuance of an Office action. The U.S. application also would need to be “made special” pursuant to USPTO procedures to ensure that it could be contemporaneously searched with its corresponding counterpart application.

The USPTO is using the First Action Interview Pilot Program (FAI) in this search results work sharing pilot program, because its procedure bifurcates the determination and evaluation of a prior art search from the notice of rejection. See Full First Action Interview Pilot Program, 1367 Off. Gaz. Pat. Office 42 (June 7, 2011). Under the FAI pilot program, participants receive a Pre-Interview Communication providing the results of a prior art search conducted by the examiner. Participants then have three options: (1) File a request not to conduct a first action interview; (2) submit a reply under 37 CFR 1.111 after reviewing the Pre-Interview Communication; or (3) conduct an interview with the examiner. Participants in the FAI pilot program experience many benefits including: (1) The ability to advance prosecution of an application; (2) enhanced interaction between applicant and the examiner; (3) the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process; and (4) the opportunity to facilitate possible early allowance. The US-JP CSP program differs from the FAI pilot program procedure by requiring a Petition to Make Special for the participating application, and providing for the exchange of information with the JPO at different stages of prosecution as set forth in this notice.

The USPTO also is initiating a joint Work Sharing Pilot Program with the Korean Intellectual Property Office (KIPO). The JPO and KIPO pilot programs are different in the way that they operate. Thus, while there may be applications that are eligible for both pilot programs, such applications will not be permitted to participate in both pilot programs due to the differences in work sharing procedures of these two different programs. More information about the US-JP CSP program can be found on the USPTO's Internet Web site at: http://www.uspto.gov/​patents-getting-started/​international-protection/​collaborative-search-pilot-program-csp.

II. Overview of Pilot Program Structure

An application must meet all of the requirements set forth in section III of this notice, to be accepted into this pilot program. An applicant must file via EFS-Web a Petition to Make Special using form PTO/SB/437JP in a published U.S. application. Use of the form will assist an applicant in complying with the pilot program's requirements. Form PTO/SB/437JP is available at: http://www.uspto.gov/​patents-getting-started/​international-protection/​collaborative-search-pilot-program-csp. Use of this form allows the USPTO to quickly identify participating applications, facilitates timely processing in accordance with this notice, and simplifies petition preparation and submission for an applicant. The collection of information involved in this pilot program has been submitted to OMB. The collection will be available at the OMB's Information Collection Review Web site (www.reginfo.gov/​public/​do/​PRAMain).

No fee is required for submission of petitions using Form PTO/SB/437JP. The fee (currently $140.00) for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice.

The offices will search the corresponding counterpart applications participating in the pilot program sequentially. The office of first search will be set based upon which participating counterpart application, the JPO or the U.S. application, has the earlier filing date. In the event that corresponding counterpart applications were filed on the same day, then the office of first search will be determined as agreed to by the offices. Each office may reevaluate the workload and resources needed to administer the pilot program at any time. The USPTO will provide notice of any substantive changes to the program (including early termination of the program) at least thirty (30) days prior to implementation of any changes.

New patent applications are normally taken up for examination in the order of their U.S. filing date. Applications accepted into this pilot program will receive expedited processing by being granted special status and taken out of turn until issuance of a Pre-Interview Communication, or first-action Notice of Allowability but will not maintain special status thereafter. While JPO and USPTO will be sharing search results, the possibility exists that there may be differences in the listing of references made of record by the USPTO versus those made of record in the corresponding JPO counterpart application. Participants in the US-JP CSP program should review the references cited in each office's communication. If any JPO communication to an applicant cites references that are not already of record in the USPTO application and the applicant wants the examiner to consider the references, the applicant should promptly file an Information Disclosure Statement (IDS) that includes a copy of the JPO communication along with copies of the newly cited references in accordance with 37 CFR 1.98 and MPEP § 609.04(a)-(b). See also MPEP §§ 609 and 2001.06(a).

III. Requirements for Participation in the US-JP CSP Program

The following requirements must be satisfied for a petition under the US-JP CSP program to be granted:

(1) The application must be a published, non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c) with an effective filing date no earlier than March 16, 2013. The U.S. application and the corresponding JPO counterpart application must have a common earliest priority date that is no earlier than March 16, 2013.

(2) A completed petition form PTO/SB/437JP must be filed in the application via EFS-Web after the U.S. application has published. Form PTO/SB/437JP is available at: http://www.uspto.gov/​patents-getting-started/​international-protection/​collaborative-search-pilot-program-csp. An applicant may request early publication in accordance with 37 CFR 1.219 to expedite the filing of the petition.

(3) The petition submission must include an express written consent under 35 U.S.C. 122(c) for the USPTO to receive prior art references and comments from the JPO that will be considered during the examination of the U.S. application participating in the US-JP CSP Program. Form PTO/SB/437JP includes language compliant with the consent requirements for this pilot program.

(4) The petition must be filed at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system (i.e., at least one day prior to the date when a first Office action on the merits, notice of allowability or allowance, or action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935), appears in the PAIR system). An applicant should check the status of the application using the PAIR system prior to submitting the petition to ensure that this requirement is met.

(5) The petition for participation filed in the corresponding JPO counterpart application for the US-JPO CSP program must be granted or have been granted by JPO. The USPTO and JPO petitions should be filed within fifteen days of each other. Both the JPO and the USPTO petitions must be granted before either application can be treated under the US-JP CSP program. As the requirements of each office's pilot programs may differ, applicants should review the requirements for both pilot programs when considering participation, ensuring that the respective corresponding counterpart applications can comply with each office's requirements.

(6) The petition submission must include a claims correspondence table that notes which independent claims between the pending U.S. and JPO applications have a substantially corresponding scope to each other. Claims are considered to have “substantially corresponding scope” where, after accounting for differences due to claim format requirements, the scope of the corresponding independent claims in the corresponding counterpart applications would either anticipate or render obvious the subject matter recited under U.S. law. Additionally, claims in the corresponding U.S. counterpart application that introduce a new/different category of claims than those presented in the corresponding JPO counterpart application(s) are not considered to substantially correspond. For example, where a corresponding JPO counterpart application contains only claims relating to a process of manufacturing a product, then any product claims in the corresponding U.S. counterpart application are not considered to substantially correspond, even if the product claims are dependent on process claims, which substantially correspond to claims in each corresponding counterpart application. Applicants may file a preliminary amendment in compliance with 37 CFR 1.121 to amend the claims of the corresponding U.S. counterpart application to satisfy this requirement when attempting to make the U.S. application eligible for the program.

(7) The application must contain three or fewer independent claims and twenty or fewer total claims. The application must not contain any multiple dependent claims. For an application that contains more than three independent claims or twenty total claims, or any multiple dependent claims, applicants must file a preliminary amendment in compliance with 37 CFR 1.121 to cancel the excess claims and/or the multiple dependent claims to make the application eligible for the program.

(8) The claims must be directed to a single invention. If the Office determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), the applicant must make a telephonic election without traverse in accordance with the procedures outlined in section V of this notice. An applicant is responsible to ensure the same invention is elected in both the U.S. and JPO corresponding counterpart applications for concurrent treatment in the US-JP CSP program.

(9) All submissions for the participating application while being treated under the US-JP CSP program's examination procedure must be filed via EFS-Web.

(10) The petition must include a statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication. See Form PTO/SB/413C. Any petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee, and excess claims fee filed after the mailing or notification date of a Pre-Interview Communication will not be granted.

IV. Decision on Petition To Make Special Under the US-JP Collaborative Search Pilot Program (Form PTO/SB/437JP)

An applicant must file a Petition to Make Special using Form PTO/SB/437JP in an eligible U.S. application for entry into the US-JP CSP program after the application has published. An applicant may request early publication in accordance with 37 CFR 1.219 to expedite the filing of the petition. An applicant also must file the appropriate petition paper in the corresponding JPO counterpart application for participation in the US-JP CSP program. Once both petitions are granted, the corresponding U.S. counterpart application will receive expedited processing by being placed on the examiner's special docket for examination in accordance with sections V-IX of this notice.

A. Petition Decision Making: An applicant must file appropriate petition papers in the USPTO and JPO corresponding counterpart applications within fifteen days of each other. If the petitions are not filed within fifteen days of each other, an applicant runs the risk of one of the pending applications being acted upon by an examiner before entry into the pilot program, which will result in both applications being denied entry into the pilot program. Both offices must grant the respective petitions in order for the applications to participate in the pilot program. Once decisions granting the petitions have issued, an applicant will no longer have a right to file a preliminary amendment that amends the claims. Any preliminary amendment filed after petition grant and before issuance of a Pre-Interview Communication amending the claims, will not be entered unless approved by the examiner. After the decision granting the petition issues, and before issuance of a Pre-Interview Communication, an applicant may still submit preliminary amendments to the specification that do not affect the claims. If either office determines that the petition must be denied, then the other office will be informed of the denial determination, and both offices will issue decisions denying the petition.

B. Petition Dismissal: If an applicant files an incomplete Form PTO/SB/437JP, or if an application accompanied by Form PTO/SB/437JP does not comply with the requirements set forth in this notice, the USPTO will notify the applicant of the deficiency by issuing a dismissal decision and the applicant will be given a single opportunity to correct the deficiency. If the applicant still wishes to participate in the US-JP CSP Program, the applicant must make appropriate corrections within one month or thirty days of the mailing date of the dismissal decision, whichever is longer. The time period for reply is not extendable under 37 CFR 1.136(a). If the applicant does not timely file a response to the dismissal decision or timely files a response that fails to correct all of the noted deficiencies, the petition will be denied. In both cases, USPTO will notify JPO of the denial and then both offices will issue a denial decision in each application, resulting in neither application participating in the pilot program. The U.S. application will then be examined in accordance with standard examination procedures, unless designated special in accordance with another established procedure (e.g., Prioritized Examination, Special Based on Applicant's Age, etc.). If the applicant timely files a response to the dismissal decision correcting all noted deficiencies and does not introduce new deficiencies, the USPTO will issue a decision granting the petition.

C. Withdrawal of Petition: An application can be withdrawn from the pilot program only by filing a withdrawal of the petition to participate in the pilot program prior to issuance of a decision granting the petition. Once the petition for participation in the pilot program has been granted (one day before it appears in PAIR), withdrawal from the pilot program is not permitted. The USPTO will treat any request for withdrawal from the pilot program filed after the mailing or notification of the petition being granted as a request to not conduct an interview, and subsequent to the mailing of the Pre-Interview Communication, the USPTO will issue a First Action Interview Office Action, in due course. (See section VIII.B.1. of this notice.)

V. Requirement for Restriction

If the examiner determines that not all the claims presented are directed to a single invention, the telephone restriction practice set forth in MPEP § 812.01 will be followed. An applicant must make an election without traverse during the telephonic interview in accordance with the procedures outlined in sections V.A. or V.B. of this notice. When a telephonic election is made, the examiner will provide a complete record of the telephone interview, including the restriction or lack of unity requirement and the applicant's election, as an attachment to the Pre-Interview Communication. Applicants are strongly encouraged to ensure that applications submitted for the pilot are written such that they claim a single, independent, and distinct invention. An applicant is responsible to ensure the same invention is elected in both the U.S. and JPO corresponding counterpart applications for concurrent treatment in the US-JP CSP program.

A. USPTO Office of First Search: If the USPTO determines a restriction is required, applicant must make an election without traverse during the telephonic interview in response to a restriction or lack of unity requirement. If the applicant refuses to make an election without traverse, or if the examiner cannot reach the applicant after a reasonable effort (i.e., three business days), the examiner will treat the first claimed invention (the group of claim 1) as constructively elected without traverse for examination. The examiner will record the circumstances for the constructive election in the next Office communication (Pre-Interview Communication or Notice of Allowability). If the restriction requirement claim groups have substantially corresponding scope to different corresponding JPO counterpart applications, upon election of one group without traverse, an applicant may file a divisional U.S. application(s) and may separately petition to have the divisional U.S. application(s) participate in the pilot program. An applicant must include the decisions granting the petition from both the parent U.S. application and from the divisional application's corresponding JPO counterpart application, to expedite decision making for the corresponding U.S. counterpart divisional application.

B. USPTO Office of Second Search: If the USPTO is the office of second search, then a restriction or lack of unity requirement determination by the examiner will first take into consideration whether only one of the restriction claim groups has a substantially corresponding scope to the corresponding JPO counterpart application that was already searched. If so, then the USPTO will designate that group as elected without traverse for treatment in accordance with this notice. If more than one of the restricted claim groups was searched in the corresponding JPO counterpart applications, the examiner will attempt to contact the applicant for a telephonic interview in order to provide for the opportunity to elect a claim group without traverse. If applicant refuses to make an election without traverse, or if the examiner cannot reach the applicant after a reasonable effort (i.e., three business days), the examiner will treat the first claimed invention of the U.S. application that was searched in the counterpart JPO application as constructively elected without traverse. If the other restriction requirement groups have substantially corresponding scope to other different corresponding JPO counterpart applications, the applicant may file corresponding U.S. counterpart divisional applications and may separately petition to have the divisional U.S. applications participate in the pilot program. The applicant must include the decision granting the petition from the parent application and from the U.S. divisional application's corresponding JPO counterpart application, if any, to expedite decision making for the corresponding U.S. counterpart divisional application.

VI. Searching

The offices will search the corresponding counterpart applications participating in the pilot program sequentially. The office of first search will be set based upon which participating counterpart application (JPO or U.S.) has the earlier filing date. In the event that both corresponding counterpart applications were filed on the same day, then the office of first search will be determined as agreed to by the offices.

A. USPTO Office of First Search: If the USPTO is the office of first search, the JPO will place a hold on the corresponding JPO counterpart application to await the USPTO initial search results. The corresponding U.S. counterpart application will be docketed to the USPTO examiner in accordance with USPTO procedures for this program. The USPTO examiner will review the application, perform a prior art search, and communicate the initial search results to the JPO. Upon receipt of the USPTO initial search results, the JPO will remove the docket hold, and the JPO examiner will perform a prior art search of the corresponding JPO counterpart application. The JPO will then forward the search results to the USPTO. The USPTO will then issue a communication in accordance with section VII of this notice.

B. JPO Office of First Search: If the JPO is the office of first search, the USPTO will place a hold on the corresponding U.S. counterpart application to await the JPO initial search results. The corresponding JPO counterpart application will be docketed to the JPO examiner in accordance with JPO procedures for this pilot program. The JPO examiner will review the application, perform an evaluation and prior art search, and communicate the initial search results to the USPTO. Upon receipt of the JPO initial search results, the USPTO will remove the docket hold, and the USPTO examiner will review the application and perform a prior art search of the corresponding U.S. counterpart application. The USPTO will then forward the search results to the JPO and issue a communication to applicant in accordance with section VII of this notice.

C. Exceeding Maximum Search Results Exchange Hold: If the search results have not been exchanged within 90 days of the mailing date of the decision granting participation in the program, then each office will independently issue search results to the applicant without the search results from the other office. The USPTO will issue the search results in either a Notice of Allowability or a Pre-Interview Communication as set forth in Section VII of this notice, noting that JPO search results are not included. The Notice of Allowability or Pre-Interview Communication also will note that the corresponding counterpart applications are being removed from the pilot program for evaluation purposes only, and that the corresponding U.S. counterpart application will continue to be treated in accordance with the FAI pilot program procedures, if necessary.

VII. Post Search Exchange Communication

Once all search results are received by the examiner and considered, then either a Notice of Allowability or a Pre-Interview Communication may issue.

A. Notice of Allowability: If the examiner, after considering both sets of search results, determines that the application is in condition for allowance or the application could be placed in condition for allowance with minor corrections or a possible amendment or submission, then the examiner may allow the application. The examiner may issue a notice of allowability, or contact the applicant to conduct an interview in accordance with MPEP § 713 to discuss any possible amendments or submissions to place the application in condition for allowance. The USPTO will notify JPO of the examiner's determination of allowability to include all findings and references identified in the notice of allowance. The examiner will cite references from the JPO search results in a Notice of References Cited form PTO-892 when the Notice of Allowability is issued to applicant. The Notice of Allowability with a completed Notice of References Cited form PTO-892 also will be forwarded to JPO for further consideration by the JPO examiner of record for the corresponding JPO counterpart application.

B. Pre-Interview Communication: If the examiner, after considering both sets of search results, determines that the application is not in condition for allowance, then the examiner will prepare and issue a Pre-Interview Communication (PTOL-413FP) and a Notice of References Cited (PTO-892) citing the prior art references, identifying any rejections or objections, and any designation of allowable subject matter. The examiner will cite references from the JPO search results in a Notice of References Cited form PTO-892 when the Pre-Interview Communication is issued to applicant. The Pre-Interview Communication with a completed Notice of References Cited form PTO-892 will also be forwarded to JPO for further consideration by the JPO examiner of record for the corresponding JPO counterpart application.

The Pre-Interview Communication issued to an applicant will set forth a time period of one month or thirty days, whichever is longer, for the applicant to request or decline an interview. An applicant is responsible for responding to the Pre-Interview Communication in accordance with the First Action Interview Program procedures discussed in Section VIII of this notice. The USPTO will permit an applicant to extend this time period for reply pursuant to 37 CFR 1.136(a) for one additional month in accordance with the First Action Interview Program, as set forth in section VIII, subsection B (Applicant's Options and Reply to Pre-Interview Communication) and subsection C (Failure to Respond to Pre-Interview Communication) of this notice. The examiner's typical working schedule also will be provided with the Pre-Interview Communication to indicate the examiner's availability for scheduling the interview.

VIII. Post Pre-Interview Communication

A. Amendments Filed After Pre-Interview Communication: Once a Pre-Interview Communication has been entered in an application, an applicant no longer has a right to amend any part of the application until the first action interview is conducted and the First Action Interview Office Action is sent. Therefore, any amendments filed after the Pre-Interview Communication, but before the interview and the mailing or notification date of a First Action Interview Office Action (PTOL-413FA), will not be entered unless approved by the examiner or in accordance with the procedure of the Full First Action Interview Pilot Program as set forth in section VIII, subsection B(2), or section IX, subsection B(3), of this notice. This is because the examiner has already devoted a significant amount of time to the preparation of the Pre-Interview Communication. See 37 CFR 1.115(b) and MPEP § 714.01(e). The USPTO may enter the amendment if it is clearly limited to: Cancellation of claims; adoption of examiner suggestions; placement of the application in condition for allowance; and/or correction of informalities (similar to the treatment of an after-final amendment). Amendments will be entered solely at the examiner's discretion.

B. Applicant Options and Reply to Pre-Interview Communication: Upon receipt of a Pre-Interview Communication, the applicant has three options:

(1) File a “Request to Not Have a First Action Interview”;

(2) File a reply under 37 CFR 1.111 waiving the first action interview and First Action Interview Office Action—an applicant is accepting that the Pre-Interview Communication is the first Office action on the merits; or

(3) Schedule the first action interview—an applicant must file an Applicant Initiated Interview Request Form (PTOL-413A) electronically via EFS-Web, accompanied by a proposed amendment or arguments, and schedule the interview to be conducted within two months or sixty days, whichever is longer, from the filing of the Applicant Initiated Interview Request.

1. Request to Not Have a First Action Interview: If an applicant wishes not to have the first action interview, applicant should electronically file a letter requesting to not have a first action interview within the time period set forth in the Pre-Interview Communication. In this situation, a first action interview will not be conducted, and the examiner will provide the First Action Interview Office Action setting forth the requirements, objections, and rejections relevant to the claimed invention. However, such a request will not preclude the examiner from contacting the applicant and conducting a regular interview in accordance with MPEP § 713 to discuss any issues or possible amendment to place the application in condition for allowance. To ensure that the request will be processed and recognized timely, an applicant should file the request electronically via EFS-Web, selecting the document description “Request to Not Have a First Action Interview” on the EFS-Web screen.

Once the petition for entry into the pilot has been granted (one day before it appears in PAIR), withdrawal from the program is not permitted. Therefore, the USPTO will treat a request for withdrawal from the pilot program filed after the mailing or notification of granting an applicant's petition to participate in the pilot as a request to not conduct an interview, issue a Pre-Interview Communication, and subsequently enter a First Action Interview-Office Action, in due course.

2. File a Reply under 37 CFR 1.111, Waiving the First Action Interview and First Action Interview Office Action: Applicants may file, preferably in conjunction with a request to not conduct the interview, a reply in compliance with 37 CFR 1.111(b)-(c) to address every rejection, objection, and requirement set forth in the Pre-Interview Communication, thereby waiving the first action interview and First Action Interview Office Action. The reply under 37 CFR 1.111 must be filed within the time period for reply set forth in the Pre-Interview Communication. To ensure that the request will be processed and recognized timely, an applicant should file the request electronically via EFS-Web, selecting the document description “Reply under 1.111 to Pre-Interview Communication” on the EFS-Web screen.

In this situation, a first action interview will not be conducted, and a First Action Interview Office Action will not be provided to the applicant. The Pre-Interview Communication will be deemed the first Office action on the merits. The examiner will consider the reply under 37 CFR 1.111 and provide an Office action in response to the reply, in due course. The Office action will be the second Office action on the merits, and thus it could be a final Office action, a notice of allowability, or other appropriate action.

3. Schedule the First Action Interview: If an applicant wants a first action interview with the examiner, the applicant must timely file an Applicant Initiated Interview Request Form (PTOL 413A), electronically using EFS-Web, accompanied by a proposed amendment and/or arguments (as an attachment to the request). To ensure that the request will be processed and recognized timely, the applicant should select the document description “First Action Interview—Schedule Interview Request.”

An applicant must designate a proposed date to conduct the interview to facilitate scheduling of the first action interview. The applicant's proposed date to conduct the interview must be within two months or sixty days, whichever is longer, from the filing of the Applicant Initiated Interview Request Form. An applicant should consult the examiner's work schedule provided in the Pre-Interview Communication and discuss with the examiner the best date for conducting the interview.

After filing the Applicant Initiated Interview Request Form, an applicant must contact the examiner to confirm the interview date. The applicant's failure to conduct an interview within two months or sixty days, whichever is longer, from the filing of Applicant Initiated Interview Request Form will be treated as a failure to respond to the Pre-Interview Communication. See section VIII; subsection C (Failure to Respond to Pre-Interview Communication) of this notice. The interview may be in person, telephonic, or a video-conference. An applicant must provide written authorization to conduct any Internet email communications with the examiner. See MPEP § 502.03 for more information.

The proposed amendment or arguments must be clearly labeled as “PROPOSED” at the header or footer of each page and filed electronically via EFS-Web as an attachment to the Applicant Initiated Interview Request Form. The proposed amendment or arguments will not be entered as a matter of right. The examiner, based upon discussions, feedback, and agreement with an applicant during the interview may at his or her discretion enter the amendment if found sufficient to advance prosecution on the merits. See MPEP §§ 713.01 III and 713.04; see also MPEP §§ 714 and 1302.04. Even if the examiner denies entry of the proposed amendment, the proposed amendment will be placed in the application file.

Preparation for the Interview: An applicant must be prepared to fully discuss the prior art of record, any relevant interview talking points from the interview talking points posted at http://www.uspto.gov/​web/​offices/​pac/​dapp/​opla/​preognotice/​fai_​talking_​points.pdf,, and any rejections or objections, with the intent to clarify and resolve all issues with respect to patentability during the interview. An applicant also must be prepared to discuss any proposed amendment or arguments previously submitted and discuss and resolve any relevant issues that arise. The interview talking points posted at http://www.uspto.gov/​web/​offices/​pac/​dapp/​opla/​preognotice/​fai_​talking_​points.pdf represent a non-exhaustive list of potential topics for discussion in a first action interview. The talking points are available to the public and the patent examining corps to assist and facilitate comprehensive and effective first action interviews.

Multiple proposed amendments or sets of arguments are not permitted.

Inventor Participation: Inventor participation in the interview process is encouraged, as it may assist in the resolution of outstanding rejections and/or objections.

C. Failure to Respond to Pre-Interview Communication: If applicant fails to: (1) Respond to the Pre-Interview Communication within the time period for reply or (2) conduct the interview within two months or sixty days, whichever is longer, from the filing of the Applicant Initiated Interview Request Form, the Office will enter a First Action Interview Office Action. Therefore, the consequence for failure to respond to the Pre-Interview Communication is issuance of a First Action Interview Office Action without the benefit of an interview.

IX. First-Action Interview and First-Action Interview Office Action

A. First-Action Interview

The interview will be conducted in accordance with the procedure provided in MPEP § 713 except as otherwise provided in this notice. The interview should focus on and include:

1. A discussion to assist the examiner in developing a better understanding of the invention;

2. A discussion to establish the state of the art as of the effective filing date of the claimed invention, including the prior art references cited by both applicant and examiner (as only applications subject to the First Inventor to File provisions of the Leahy-Smith America invents act (AIA) are eligible for this pilot program); and

3. A discussion of the features of the claimed subject matter which make the invention patentable, including any proposed amendments to the claims.

B. Three Possible Outcomes of a First-Action Interview

1. An agreement is reached and all claims are in condition for allowance. If the applicant and the examiner reach agreement that the application is in condition for allowance, the examiner must complete an Interview Summary (PTOL-413), enter and attach any necessary amendments or arguments (e.g., the proposed amendment and/or an examiner's amendment), generate a notice of allowability (PTOL-37), and attach a copy of the completed Applicant Initiated Interview Request Form. If the examiner agrees to enter the proposed amendment, the examiner must annotate the first page of the proposed amendment (e.g., “OK to enter”). In an in-person interview, a courtesy copy of the completed forms will be given to the applicant at the conclusion of the interview. The completed forms will then be promptly made of record with a Notice of Allowability and a Notice of Allowance and Fees Due (PTOL 85). The Notice of Allowability, Notice of Allowance, interview summary, and all amendments made of record along with a completed Notice of References Cited form PTO-892 listing any newly cited references also will be forwarded to JPO for consideration by the JPO examiner of record for the corresponding JPO counterpart application.

2. An agreement as to allowability is not reached. If the applicant and the examiner do not reach agreement during the interview, the examiner will set forth any unresolved, maintained, or new requirements, objections, and rejections in the First Action Interview Office Action. The examiner will also complete an Interview Summary, highlighting the basis for any unresolved, maintained, or new requirements, objections, and rejections as well as resolution of any issues that occurred during the interview, attaching a copy of the completed Applicant Initiated Interview Request Form and any proposed amendments or arguments. In an in-person interview, a courtesy copy of the completed forms may be given to the applicant at the conclusion of the interview. The completed forms will be promptly made of record.

For this situation, the First Action Interview Office Action is deemed the first Office action on the merits. Because the requirements, objections, and grounds of rejection are provided in the Pre-Interview Communication and the First Action Interview Office Action, an applicant has sufficient notice of the requirements, objections, and grounds of rejection. To avoid abandonment of the application, the applicant must, within two months or sixty days, whichever is longer, from the mailing or notification date of the First Action Interview Office Action, file a reply in compliance with 37 CFR 1.111(b)-(c). This time period for reply is extendable under 37 CFR 1.136(a) for only two additional months. The First Action Interview Office Action, interview summary, and a completed Notice of References Cited form PTO-892 listing any newly cited references also will be forwarded to JPO for consideration by the JPO examiner of record for the corresponding JPO counterpart application.

3. An agreement as to allowability is not reached, and applicant wishes to convert the previously submitted proposed amendment into a reply under 37 CFR 1.111(b) and waive receipt of a First Action Interview Office Action. Applicants may request the USPTO to enter the previously filed proposed amendment and/or arguments as a reply under 37 CFR 1.111 to address every rejection, objection, and requirement set forth in the Pre Interview Communication, waiving a First Action Interview Office Action, if the proposed amendment and/or arguments comply with the requirements of 37 CFR 1.121 and 37 CFR 1.111(b)-(c). If the examiner agrees to enter the proposed amendment as the reply under 37 CFR 1.111 to the Pre-Interview Communication, the examiner must annotate the first page of the proposed amendment (e.g., “OK to enter”) and provide a statement in the Interview Summary (e.g., “Applicant requested to enter the proposed amendment as a reply under 37 CFR 1.111 to the Pre-Interview Communication, waiving the First Action Interview Office Action”). The applicant cannot file any additional amendment and/or arguments until the mailing or notification of the next Office action.

In this situation, a First Action Interview Office Action will not be provided to the applicant. The Pre-Interview Communication and the interview will be deemed the first Office action on the merits. The examiner will enter the proposed amendment and/or arguments, consider it as the reply under 37 CFR 1.111, and provide an Office action in response to the reply. The Office action will be the second Office action on the merits, and thus it could be a final Office action, a notice of allowability, or other appropriate action.

C. Substance of Interview Must Be Made of Record

A complete written statement as to the substance of the interview with regard to the merits of the application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. It is applicant's responsibility to make of record the substance of an interview, and it is the examiner's responsibility to see that such a record is made and to correct inaccuracies, including those which bear directly on the question of patentability. See MPEP § 713.04.

Date: July 2, 2015.

Michelle K. Lee,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.