Patent Law

USPTO Rogers Pilot Program

By Stephen Albainy-Jenei

The United States Patent and Trademark Office (USPTO) is initiating a pilot program in which the applicant who complies with certain requirements will receive the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then be permitted to conduct an interview with the examiner to discuss the cited prior art references prior to the first Office action on the merits (see flow chart).

The requirements for the pilot program are set forth in the notice entitled “First Action Interview Pilot Program” (available here). An interview under this pilot program would advance prosecution of the application because it would enhance the interactions between the applicant and the examiner, provide applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process, and facilitate possible early allowance.

Bio/Pharma people are SOL, though.  The pilot program is only for applications that are either (1) classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring) and assigned to an art unit in either group 2140 or 2150; or (2) classified in Class 707 (Data Processing: Database and File Management or Data Structures) and assigned to an art unit in group 2160.

Currently, granting an interview before first action on the merits of a new application is within the discretion of the examiner, who has not yet searched the case, and a showing may be required to justify the granting of the interview. See MPEP § 713.02. The pilot program provides a procedure which, if followed, makes the granting of an interview non-discretionary.

The effective date for this change in practice is: 28 April 2008.

Full post as published by Patent Baristas on April 16, 2008 (boomark / email).