Finally, even where the examiner does not view the patent application favorably, the interview provides insights into the examiner's concerns and overall posture toward the case; this allows lawyers to craft a more targeted response. As an example, if it becomes clear that the examiner is convinced that no allowable subject matter exists for the patent application, counsel may decide earlier in the prosecution to set up for an appeal, rather than continue to try different amendments in different responses in a vain attempt to work something out.
In more than half of the cases where we have received pre-interview communications, we have already received an allowance, with an average time of three to four months between the pre-interview communication and the allowance.
The FAIPP was set to expire on Nov. 16, 2012, but the USPTO website states: "A notice announcing the extension of the pilot program beyond November 16, 2012, will be issued in due course."
The best opportunity for success under FAIPP is to approach examiners cooperatively and work together to find allowable subject matter for the patent, rather than coming from a more adversarial position. The legal department should have a prosecution strategy in place and know what the company's bottom line is on claim scope for an initial patent.
An applicant that accepts even narrowed allowable subject matter can obtain quick initial protection for its technology, then pursue broader coverage through continuation applications where the examiner is already up to speed on the case and the applicant has a feel for what factors were the most fruitful areas for further exploration.
For applications that satisfy the requirements of the FAIPP, few reasons exist not to participate in the FAIPP. It provides better results for the applicant and arguably, due to more compact prosecution and more rapid examination, better results for the patent system as a whole.
Michael W. Piper of Plano is president of Conley Rose, a former member of the American Intellectual Property Law Association board of directors and a member of the AIPLA Special Task Force on America Invents Act Rulemaking.
