[Federal Register Volume 77, Number 131 (Monday, July 9, 2012)]
[Pages 40342-40343]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-16596]



Patent and Trademark Office

[Docket No. PTO-P-2012-0025]

Extension of the Full First Action Interview Pilot Program and 
Request for Comments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice and request for comments.


SUMMARY: The United States Patent and Trademark Office (Office) is 
extending the First Action Interview (FAI) Pilot Program while 
completing a comprehensive review of the program, deciding what, if 
any, adjustments should be made to the program, and whether the program 
should be extended further or made permanent. The program is intended 
to expedite disposition of an application by enhancing communication 
between an applicant and an examiner at the beginning of the 
examination process. Specifically, the program allows an applicant to 
conduct an interview with an examiner prior to the issuance of an 
Office action, but after receiving the examiner's search results and 
initially identified issues. During its review, the Office will 
consider feedback from both internal and external stakeholders. 
Accordingly, in addition to announcing the extension of the program, 
the Office is requesting comments on the program.

DATES: Comment Deadline Date: Written comments must be received on or 
before August 8, 2012. No public hearing will be held.
    Extension Date: The Office has extended the FAI Pilot Program until 
August 16, 2012. Notice of this extension was placed on the USPTO's Web 
site just after expiration of the prior extension.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may 
also be submitted by postal mail addressed to: United States Patent and 
Trademark Office, Mail Stop Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Joseph F. Weiss, Jr. Although comments may be submitted by 
postal mail, the Office prefers to receive comments by electronic mail 
message over the Internet in order to facilitate posting on the 
Office's Internet Web site.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located at Madison Building East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(http://www.uspto.gov). Because comments will be made available for 
public inspection, information that is not desired to be made public, 
such as an address or phone number should not be included in the 

FOR FURTHER INFORMATION CONTACT: Joseph F. Weiss, Jr., Legal Advisor 
(telephone (571) 272-7759; email [email protected]), of the Office 
of the Deputy Commissioner for Patent Examination Policy. 
Alternatively, mail may be addressed to Mr. Weiss at Commissioner for 
Patents, Attn.: FFAIPP, P.O. Box 1450, Alexandria, VA, 22313-1450.

    Background: The Office published a notice implementing the Full FAI 
Pilot Program in 2011, which expanded the eligibility criteria to all 
utility applications of the previous Enhanced FAI Pilot Program. See 
Full First Action Interview Pilot Program, 1367 Off. Gaz. Pat. Office 
42 (June 7, 2011). See also Enhanced First Action Interview Pilot 
Program, 1347 Off. Gaz. Pat. Office 173 (October 20, 2009). Under the 
program, participants are permitted to conduct an interview with the 
examiner after reviewing a Pre-Interview Communication providing the 
results of a prior art search conducted by the examiner.
    Since the date the pilot was expanded, the Office has received over 
2,100 requests to participate in the program. Of the applications that 
have been taken up for examination since the expansion, the Office has 
allowed over 35% on first action. Participants in the

[[Page 40343]]

program have experienced several benefits including: (1) Effectively 
advancing prosecution of an application before issuance of an Office 
action; (2) enhanced interaction between the applicant and the examiner 
before issuance of an Office action; (3) resolving patentability issues 
one-on-one with the examiner at the beginning of the prosecution 
process, rather than after a first Office action; and (4) expedited 
allowance of an application, relative to standard examination, due to 
the program's enhanced communication and shorter time periods for 
    Extension: The Office is extending the FAI Pilot Program until 
August 16, 2012, while it completes its evaluation of the program. 
During this time, the Office will be gathering and analyzing relevant 
information, including comments from external and internal participants 
in order to determine what, if any, adjustments should be made to the 
program and whether the program will become permanent or be further 
    Request for Comments: The Office is seeking comments on the FAI 
Pilot Program. The Office is interested in receiving feedback as to 
whether the program is meeting the needs of its applicants, and whether 
any aspects of the program cause applicants to not participate. The 
following questions have been provided to help elicit the types of 
information the Office is interested in receiving. However, the list of 
questions below is not exhaustive and responses do not need to be 
limited to only information that answers these questions.
    (1) Based on your use of the program, did you experience the 
benefits of the FAI program set out above? Did you experience 
additional benefits?
    (2) Did the Pre-Interview Communication provide you with 
sufficient, meaningful information to conduct an effective interview?
    (3) How productive is the interview before first action in 
advancing prosecution?
    (4) How would you rate the extent/utility of the information 
provided in the Pre-Interview Communication and subsequent Office 
    (5) What changes would you make to the FAI program? How would these 
changes improve the program?
    (6) For any application in which you decided that the FAI program 
would not meet your needs, what aspect of the program made the program 
unsuitable for the application?
    (7) Do you consider the FAI program to be more efficient (or 
otherwise beneficial) as compared to traditional prosecution?
    (8) Should the Office make the FAI program permanent?

    Dated: June 29, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-16596 Filed 7-6-12; 8:45 am]