The U.S. Patent and Trademark Office has instituted its First Action Interview Pilot Program (FAIPP) for patent applicants. While currently a well-kept secret, legal departments seeking to obtain patents for their companies should understand and use the program.
My firm has filed more than 200 requests to participate in the FAIPP. Our lawyers’ experience has been that this free program improves the speed to first action on patent applications, as well as the relevance of early office actions (the examiner’s interim rejections on patentability) and the focus of our responses. This combination accelerates the process of obtaining patents and reduces the number of office actions to allowance of the patent, thus improving the total cost to convincing the USPTO to allow issuance of a patent.
One significant benefit of the FAIPP is that it enables faster, more interactive communication and feedback between the patent applicant and patent examiner. The FAIPP lets a patent applicant receive an initial set of prior-art search results from the patent examiner, plus a quick summary of the examiner’s analysis, called the pre-interview communication. The FAIPP also lets the applicant provide the examiner with — not a formal response — but proposed arguments and amendments to the patent’s claims in the time period leading up to an interview with the examiner before she issues her first office action on the merits.
To be eligible to participate in the FAIPP, the patent application must include no more than three independent claims and 20 total claims. The applicant can request participation in the FAIPP at any time up to when the examiner mails the first office action.
The applicant must agree to several conditions to participate. First, the applicant must not traverse any restriction requirement, meaning the applicant won’t argue when the examiner says the patent includes more than one invention and compels the applicant to choose one invention. Second, the applicant must accept a shortened one-month response period (instead of the usual three months) after the pre-interview communication and after the initial office action. When a patent applicant seeks speed and efficiency, the shortened response periods actually provide a benefit as much as a burden.
The applicant isn’t penalized for failing to abide by these restrictions. If the applicant violates any of them, the examiner simply removes the patent application from the program. Specific regulations and notices discussed in this article may be found through the PTO’s FAIPP website.
While as an official matter the FAIPP does not result in the examiner advancing an application out of turn, my firm’s experience is that we receive the pre-interview communications earlier than we do for comparable non-FAIPP first office actions. For us, the outcome has been that applications in the FAIPP progress more rapidly. On average, we received a pre-interview communication between six and seven months after filing our FAIPP request.
Even before FAIPP, my firm believed in the benefits of interviews to provide the right context and focus to the examiner for the application, as well as to explore the examiner’s concerns and how to address them without creating a detailed record. The chance to have that first conversation before the examiner invests significant time in the first action can only benefit a legal department seeking efficient patent prosecution.
Further, in my firm’s experience, many examiners see the FAIPP as an opportunity to reach an efficient decision and walk into the first interview looking for a path for an early allowance. If the applicant comes in ready to make amendments to address the examiner’s key concerns, allowances can come directly out of the interview, possibly with short follow-up exchanges setting up an amendment to conclude the process.
When the examiner does come up with additional prior art and a new action (a new rejection on patentability), she often is more ready to engage in quick discussions and consider proposed amendments to address the new issues to reach allowance.
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.