[Federal Register Volume 80, Number 131 (Thursday, July 9, 2015)]
[Notices]
[Pages 39412-39418]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-16850]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2015-0026]
United States Patent and Trademark Office and Korean Intellectual
Property Office Collaborative Search Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
initiating a joint Work Sharing Pilot Program with the Korean
Intellectual Patent Office (KIPO) to study whether the exchange of
search reports 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 concurrently conduct a prior art search for its corresponding
counterpart application. The search report from each office will then
be exchanged between offices before either office issues a
communication concerning patentability to the applicant. As a result of
this exchange of search reports, the examiners in both offices may have
a more comprehensive set of references before them when making an
initial patentability determination. 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 Korean search report
of record concurrently with the issuance of a Pre-Interview
Communication.
DATES: Effective Date: September 1, 2015.
Duration: Under the United States-Korean Collaboration Pilot (US-KR
CSP) program, the USPTO and KIPO will accept petitions to participate
for two years from its effective date. During the pilot program, each
office will be limited to granting 400 petitions. The offices may
extend the pilot program (with or without modification) for an
additional amount of time, if necessary. Both 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 (571) 272-7759. Any inquiries regarding this pilot program can be
emailed to [email protected].
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 KIPO will cooperate in a study
to determine whether work sharing between IP offices, in the form of
exchanging the results from independently performed concurrent
searches, increases the efficiency and quality of patent examination.
This exchange of search reports 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 applicant during the
U.S. application's pendency. After review of the search report and
cited art, an 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 reports may increase efficiency and promote
patent examination quality by providing the examiner with both offices'
search reports when examination commences. In order to study the
benefits of the exchange of search reports 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
[[Page 39413]]
search report 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-KR 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 KIPO at
different stages of prosecution as set forth in this notice.
The USPTO also is initiating a joint Work Sharing Pilot Program
with the Japan Patent Office (JPO). The KIPO and JPO pilot programs are
different in the way that they operate. Thus, while there may be
applications that are eligible for both work sharing 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-KR 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 a Petition to Make Special using form PTO/SB/437KR
via EFS-web in a U.S. application. Use of the form will assist an
applicant in complying with the pilot program's requirements. Form PTO/
SB/437KR is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. An
applicant's 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/
437KR. 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.
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 the US-
KR CSP 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 allowance, but will not maintain special
status thereafter. While KIPO and USPTO will be sharing search reports,
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 KIPO counterpart application. Participants in the US-
KR CSP program should review the references cited in each respective
office's search reports. If any KIPO 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 KIPO
communication along with copies of the newly cited references in
accordance with 37 CFR 1.98 and MPEP section 609.04(a)-(b). See also
MPEP sections 609 and 2001.06(a).
III. Requirements for Participation in the Pilot Program
The following requirements must be satisfied for a petition under
the US-KR CSP Program to be granted:
(1) The application must be a 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 of no earlier than March
16, 2013. The U.S. application and the corresponding KIPO counterpart
application must have a common earliest priority date that is no
earlier than March 16, 2013.
(2) A completed petition form PTO/SB/437KR must be filed in the
application via EFS-Web. Form PTO/SB/437KR is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
(3) The petition submission must include an express written consent
under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art
references and comments from KIPO, during the examination of the U.S.
application participating in the pilot program. The petition also must
provide written authorization for the USPTO to provide KIPO access to
the participating U.S. application's bibliographic data and search
reports in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form
PTO/SB/437KR 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 KIPO
counterpart application for the US-KR CSP Program must be grant or have
granted by KIPO. The KIPO and the USPTO petitions should be filed
within fifteen days of each other. Both the KIPO and the USPTO
petitions must be granted for the applications to be treated under the
US-KR CSP program. As the requirements of each office's pilot program
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 claims between the pending U.S. and KIPO
applications
[[Page 39414]]
have a substantially corresponding scope to each other. Claims are
considered to have a ``substantially corresponding scope'' where, after
accounting for differences due to claim format requirements, the scope
of the corresponding claims in the corresponding KIPO counterpart
application 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
KIPO counterpart application are not considered to substantially
correspond. For example, where the corresponding KIPO 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 the corresponding KIPO
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 may 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 for
ensuring that the same invention is elected in both the U.S. and KIPO
corresponding counterpart applications for concurrent treatment in the
US-KR CSP program.
(9) All submissions for the participating application while being
treated under the US-KR CSP program's 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 claim 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-KR Collaborative
Search Pilot Program (Form PTO/SB/437KR)
An applicant must file a Petition to Make Special using Form PTO/
SB/437KR in an eligible U.S. application for entry into the US-KR CSP
program. Applicant also must file the appropriate petition paper in the
corresponding KIPO counterpart application for participation in the US-
KR CSP program. Once both petitions are granted, the U.S. application
will receive expedited processing by being placed on the examiner's
special docket for examination in accordance with sections V-VIII of
this notice.
A. Petition Decision Making
An applicant must file appropriate petition papers in both the
USPTO and KIPO 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 the USPTO issues a decision granting the petition, 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
petition is granted and before issuance of the 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/437KR, or if an
application accompanied by Form PTO/SB/437KR 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 an applicant still wishes to participate in the pilot 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 fails to correct all of the noted
deficiencies within the time period set forth, the USPTO will render a
denial decision and notify KIPO in accordance with this notice, and
neither application will be eligible for the pilot program. The U.S.
application will then be taken up for examination 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 an applicant
timely files a response to the dismissal that corrects all the noted
deficiencies and does not introduce new instances of non-compliance,
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 acceptance
into the pilot program 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 VII.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 section 812.01 will be followed. An applicant must make
an election without traverse during the telephonic interview. If the
applicant refuses to
[[Page 39415]]
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. 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 program 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 KIPO corresponding counterpart applications for
concurrent treatment in this joint office work sharing pilot program.
VI. Pre-Interview Communication
If the application contains only one invention or an applicant has
elected one invention without traverse, the examiner will conduct a
prior art search for the claimed invention under consideration. The
examiner may prepare either a Notice of Allowability or a Pre-Interview
Communication.
A. Notice of Allowability
If the examiner 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, a Pre-
Interview Communication and all subsequent FAI procedures under this
pilot program will not be necessary. The examiner may allow the
application, or contact the applicant and conduct an interview in
accordance with MPEP section 713 to discuss any possible amendments or
submissions to place the application in condition for allowance. If the
USPTO has not received the KIPO search report at the time the examiner
has decided the claims are allowable, the USPTO will notify KIPO of the
examiner's findings and references identified during the search. The
USPTO will wait for up to 90 days from the date of notification for
receipt of the KIPO search. Upon receipt of the KIPO search report, the
examiner will consider the references cited in the KIPO search report
before making a final determination whether to issue a Notice of
Allowability. If the KIPO search report is not received within 90 days,
the examiner will issue a Notice of Allowability without consideration
of the KIPO search report. An applicant will be responsible for
determining the appropriateness of any future correspondence with the
USPTO for information later obtained from KIPO. If the examiner issues
a Notice of Allowability with consideration of the KIPO search report,
the examiner will cite references from the KIPO search report in a
Notice of References Cited (PTO-892). The Notice of Allowability with a
completed form PTO-892 also will be forwarded to KIPO for further
consideration by the KIPO examiner of record for the corresponding KIPO
counterpart application. If a Notice of Allowability will not issue,
then the examiner will prepare and issue a Pre-Interview Communication
in accordance with Section VI.B of this notice.
B. Pre-Interview Communication
If the examiner determines the application is not in condition for
allowance, the examiner will prepare a Pre-Interview Communication and
a PTO-892 citing the prior art references, identifying any rejections
or objections relevant to the claimed invention, and any designation of
allowable subject matter. If the USPTO has not received the KIPO search
report at the time the examiner has completed the Pre-Interview
Communication, the USPTO will notify KIPO of the examiner's findings
and references identified during the search. The USPTO will wait for up
to 90 days from the date of notification for receipt of the KIPO
search. Upon receipt of the KIPO search report, the examiner will issue
a Pre-Interview Communication and include a copy of the KIPO search
report. Thus, the examiner is not required to cite in the Pre-Interview
Communication references cited in the KIPO search report, because the
KIPO search report is being sent to the applicant with the Pre-
Interview Communication. If the KIPO search report is not received
within 90 days, the examiner will issue the Pre-Interview Communication
to the applicant, and the application will be removed from the pilot
program for evaluation purposes only, but will continue to be treated
in accordance with this notice. An applicant is responsible for
responding to the USPTO Pre-Interview Communication in accordance with
the First Action Interview Program procedures discussed in Section VII
of this notice.
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 VII of this notice. The USPTO will permit the applicant to
extend this time period for reply pursuant to 37 CFR 1.136(a) for one
additional month as set forth in section VII, 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.
VII. 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 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 in section VII, subsection B(2), or section
VIII, subsection B(3), of this notice. This is because the examiner has
devoted a significant amount of time to the preparation of the Pre-
Interview Communication. See 37 CFR 1.115(b) and MPEP section
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, including an explanation
on how the proposed amendments overcome art cited and/or applied in the
KIPO search report, if necessary, in accordance with U.S. patent laws;
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--
[[Page 39416]]
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, the
applicant should electronically file a letter requesting not to 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 section 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 program has been granted
(one day before it appears in PAIR), withdrawal from the pilot 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 program 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, including any issues of patentability
raised by the art cited and/or applied in the KIPO search report, if
necessary, in accordance with U.S. patent laws, 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, the
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 VII; subsection C (Failure to
Respond to Pre-Interview Communication) of this notice. The interview
may be in person, telephonic, or a video-conference. The applicant must
provide written authorization to conduct any Internet email
communications with the examiner. See MPEP section 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 proposed amendment or arguments must
address every proposed rejection, objection, and requirement set forth
in the Pre-Interview Communication, including any issues of
patentability raised by the art cited and/or applied in the KIPO search
report, if necessary, in accordance with U.S. patent laws. 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 sections 713.01 III and 713.04; see also MPEP sections 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, including any issues of patentability raised by
the art cited and/or applied in the KIPO search report, if necessary,
in accordance with U.S. patent laws. 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.
[[Page 39417]]
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 an 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.
VIII. 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 section 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 the applicant and the 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.
4. A discussion regarding any issues of patentability raised by the
art cited and/or applied in the KIPO search report, if necessary, in
accordance with U.S. patent laws.
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 and the 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 will also be forwarded to KIPO for consideration by
the KIPO examiner of record for the corresponding KIPO 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 also will 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 a personal 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, the
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 KIPO
for consideration by the KIPO examiner of record for the corresponding
KIPO 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
interview summary and a completed Notice of References Cited form PTO-
892 listing any newly cited references, if any, also will be forwarded
to KIPO for consideration by the KIPO examiner of record for the
corresponding KIPO counterpart application. 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 the applicant's responsibility to make
of
[[Page 39418]]
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 section 713.04.
Dated: July 2, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2015-16850 Filed 7-8-15; 8:45 am]
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