[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]
 BILLING CODE 3510-16-P