[Federal Register Volume 80, Number 132 (Friday, July 10, 2015)]
[Notices]
[Pages 39752-39759]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-16846]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2015-0027]


United States Patent and Trademark Office and Japan Patent 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 Japan Patent 
Office (JPO) to study whether the exchange of search results 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 conduct a prior art 
search for its corresponding counterpart application and exchange the 
search results with the other office before

[[Page 39753]]

either office issues a communication concerning patentability to the 
applicant. As a result of this exchange of search results, the 
examiners in both offices may have a more comprehensive set of 
references before them when making their initial patentability 
determinations. 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 search results of record in the form of a 
Pre-Interview Communication.

DATES: Effective date: August 1, 2015.
    Duration: Under the United States-Japan Collaborative Pilot (US-JP 
CSP) program, the USPTO and JPO will accept petitions to participate 
for two years from its effective date. During each year, the pilot 
program will be limited to 400 granted petitions, 200 granted petitions 
where USPTO performs the first search and JPO performs the second 
search, and 200 granted petitions where JPO performs the first search 
and USPTO performs the second search. The offices may extend the pilot 
program (with or without modification) for an additional amount of 
time, if necessary. The 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 JPO will cooperate in a study 
to determine whether work sharing between IP offices by exchanging 
search results, where one office will have the benefit of the other 
office's search results before conducting a search, increases the 
efficiency and quality of patent examination. This exchange of search 
results 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 the applicant during the 
U.S. application's pendency. After review of the search report and 
cited art, the 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 results may increase 
efficiency and promote patent examination quality by providing the 
examiner with both offices' search results when examination commences. 
In order to study the benefits of the exchange of search results 
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 search results 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-JP 
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 the JPO at different 
stages of prosecution as set forth in this notice.
    The USPTO also is initiating a joint Work Sharing Pilot Program 
with the Korean Intellectual Property Office (KIPO). The JPO and KIPO 
pilot programs are different in the way that they operate. Thus, while 
there may be applications that are eligible for both 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-JP 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 via EFS-Web a Petition to Make Special using form 
PTO/SB/437JP in a published U.S. application. Use of the form will 
assist an applicant in complying with the pilot program's requirements. 
Form PTO/SB/437JP is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. Use of this form allows the USPTO to quickly identify 
participating applications, facilitates timely processing in accordance 
with this

[[Page 39754]]

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/
437JP. 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.
    The offices will search the corresponding counterpart applications 
participating in the pilot program sequentially. The office of first 
search will be set based upon which participating counterpart 
application, the JPO or the U.S. application, has the earlier filing 
date. In the event that corresponding counterpart applications were 
filed on the same day, then the office of first search will be 
determined as agreed to by the offices. 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 this 
pilot 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 Notice of Allowability but will not 
maintain special status thereafter. While JPO and USPTO will be sharing 
search results, 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 JPO counterpart application. 
Participants in the US-JP CSP program should review the references 
cited in each office's communication. If any JPO 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 JPO 
communication along with copies of the newly cited references in 
accordance with 37 CFR 1.98 and MPEP Sec.  609.04(a)-(b). See also MPEP 
Sec. Sec.  609 and 2001.06(a).

III. Requirements for Participation in the US-JP CSP Program

    The following requirements must be satisfied for a petition under 
the US-JP CSP program to be granted:
    (1) The application must be a published, 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 no 
earlier than March 16, 2013. The U.S. application and the corresponding 
JPO counterpart application must have a common earliest priority date 
that is no earlier than March 16, 2013.
    (2) A completed petition form PTO/SB/437JP must be filed in the 
application via EFS-Web after the U.S. application has published. Form 
PTO/SB/437JP is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. An applicant may request early publication in accordance with 37 
CFR 1.219 to expedite the filing of the petition.
    (3) The petition submission must include an express written consent 
under 35 U.S.C. 122(c) for the USPTO to receive prior art references 
and comments from the JPO that will be considered during the 
examination of the U.S. application participating in the US-JP CSP 
Program. Form PTO/SB/437JP 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 JPO 
counterpart application for the US-JPO CSP program must be granted or 
have been granted by JPO. The USPTO and JPO petitions should be filed 
within fifteen days of each other. Both the JPO and the USPTO petitions 
must be granted before either application can be treated under the US-
JP CSP program. As the requirements of each office's pilot programs 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 independent claims between the pending U.S. and 
JPO applications have a substantially corresponding scope to each 
other. Claims are considered to have ``substantially corresponding 
scope'' where, after accounting for differences due to claim format 
requirements, the scope of the corresponding independent claims in the 
corresponding counterpart applications 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 JPO counterpart application(s) are not considered to 
substantially correspond. For example, where a corresponding JPO 
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 each corresponding 
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 must 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 to 
ensure the same invention is elected in both the U.S. and JPO 
corresponding

[[Page 39755]]

counterpart applications for concurrent treatment in the US-JP CSP 
program.
    (9) All submissions for the participating application while being 
treated under the US-JP CSP program's examination 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 claims 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-JP Collaborative 
Search Pilot Program (Form PTO/SB/437JP)

    An applicant must file a Petition to Make Special using Form PTO/
SB/437JP in an eligible U.S. application for entry into the US-JP CSP 
program after the application has published. An applicant may request 
early publication in accordance with 37 CFR 1.219 to expedite the 
filing of the petition. An applicant also must file the appropriate 
petition paper in the corresponding JPO counterpart application for 
participation in the US-JP CSP program. Once both petitions are 
granted, the corresponding U.S. counterpart application will receive 
expedited processing by being placed on the examiner's special docket 
for examination in accordance with sections V-IX of this notice.
    A. Petition Decision Making: An applicant must file appropriate 
petition papers in the USPTO and JPO 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 decisions granting the petitions 
have issued, 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 decision granting the petition issues, and 
before issuance of a 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/437JP, or if an application accompanied by Form PTO/SB/437JP 
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 the applicant still wishes to participate 
in the US-JP CSP 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 does not timely 
file a response to the dismissal decision or timely files a response 
that fails to correct all of the noted deficiencies, the petition will 
be denied. In both cases, USPTO will notify JPO of the denial and then 
both offices will issue a denial decision in each application, 
resulting in neither application participating in the pilot program. 
The U.S. application will then be examined 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 the applicant timely files a 
response to the dismissal decision correcting all noted deficiencies 
and does not introduce new deficiencies, 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 the petition being granted 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 VIII.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 Sec.  812.01 will be followed. An applicant must make an 
election without traverse during the telephonic interview in accordance 
with the procedures outlined in sections V.A. or V.B. of this notice. 
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 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 JPO corresponding counterpart applications 
for concurrent treatment in the US-JP CSP program.
    A. USPTO Office of First Search: If the USPTO determines a 
restriction is required, applicant must make an election without 
traverse during the telephonic interview in response to a restriction 
or lack of unity requirement. If the applicant refuses to 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. The 
examiner will record the circumstances for the constructive election in 
the next Office communication (Pre-Interview Communication or Notice of 
Allowability). If the restriction requirement claim groups have 
substantially corresponding scope to different corresponding JPO 
counterpart applications, upon election of one group without traverse, 
an applicant may file a divisional U.S. application(s) and may 
separately petition to have the divisional U.S. application(s) 
participate in the pilot program. An applicant must include the 
decisions granting the petition from both the parent U.S. application 
and from the divisional application's corresponding JPO counterpart 
application, to expedite decision making for the corresponding U.S. 
counterpart divisional application.
    B. USPTO Office of Second Search: If the USPTO is the office of 
second search, then a restriction or lack of unity requirement 
determination by the examiner will first take into consideration 
whether only one of the

[[Page 39756]]

restriction claim groups has a substantially corresponding scope to the 
corresponding JPO counterpart application that was already searched. If 
so, then the USPTO will designate that group as elected without 
traverse for treatment in accordance with this notice. If more than one 
of the restricted claim groups was searched in the corresponding JPO 
counterpart applications, the examiner will attempt to contact the 
applicant for a telephonic interview in order to provide for the 
opportunity to elect a claim group without traverse. If applicant 
refuses to 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 of the U.S. 
application that was searched in the counterpart JPO application as 
constructively elected without traverse. If the other restriction 
requirement groups have substantially corresponding scope to other 
different corresponding JPO counterpart applications, the applicant may 
file corresponding U.S. counterpart divisional applications and may 
separately petition to have the divisional U.S. applications 
participate in the pilot program. The applicant must include the 
decision granting the petition from the parent application and from the 
U.S. divisional application's corresponding JPO counterpart 
application, if any, to expedite decision making for the corresponding 
U.S. counterpart divisional application.

VI. Searching

    The offices will search the corresponding counterpart applications 
participating in the pilot program sequentially. The office of first 
search will be set based upon which participating counterpart 
application (JPO or U.S.) has the earlier filing date. In the event 
that both corresponding counterpart applications were filed on the same 
day, then the office of first search will be determined as agreed to by 
the offices.
    A. USPTO Office of First Search: If the USPTO is the office of 
first search, the JPO will place a hold on the corresponding JPO 
counterpart application to await the USPTO initial search results. The 
corresponding U.S. counterpart application will be docketed to the 
USPTO examiner in accordance with USPTO procedures for this program. 
The USPTO examiner will review the application, perform a prior art 
search, and communicate the initial search results to the JPO. Upon 
receipt of the USPTO initial search results, the JPO will remove the 
docket hold, and the JPO examiner will perform a prior art search of 
the corresponding JPO counterpart application. The JPO will then 
forward the search results to the USPTO. The USPTO will then issue a 
communication in accordance with section VII of this notice.
    B. JPO Office of First Search: If the JPO is the office of first 
search, the USPTO will place a hold on the corresponding U.S. 
counterpart application to await the JPO initial search results. The 
corresponding JPO counterpart application will be docketed to the JPO 
examiner in accordance with JPO procedures for this pilot program. The 
JPO examiner will review the application, perform an evaluation and 
prior art search, and communicate the initial search results to the 
USPTO. Upon receipt of the JPO initial search results, the USPTO will 
remove the docket hold, and the USPTO examiner will review the 
application and perform a prior art search of the corresponding U.S. 
counterpart application. The USPTO will then forward the search results 
to the JPO and issue a communication to applicant in accordance with 
section VII of this notice.
    C. Exceeding Maximum Search Results Exchange Hold: If the search 
results have not been exchanged within 90 days of the mailing date of 
the decision granting participation in the program, then each office 
will independently issue search results to the applicant without the 
search results from the other office. The USPTO will issue the search 
results in either a Notice of Allowability or a Pre-Interview 
Communication as set forth in Section VII of this notice, noting that 
JPO search results are not included. The Notice of Allowability or Pre-
Interview Communication also will note that the corresponding 
counterpart applications are being removed from the pilot program for 
evaluation purposes only, and that the corresponding U.S. counterpart 
application will continue to be treated in accordance with the FAI 
pilot program procedures, if necessary.

VII. Post Search Exchange Communication

    Once all search results are received by the examiner and 
considered, then either a Notice of Allowability or a Pre-Interview 
Communication may issue.
    A. Notice of Allowability: If the examiner, after considering both 
sets of search results, 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, 
then the examiner may allow the application. The examiner may issue a 
notice of allowability, or contact the applicant to conduct an 
interview in accordance with MPEP Sec.  713 to discuss any possible 
amendments or submissions to place the application in condition for 
allowance. The USPTO will notify JPO of the examiner's determination of 
allowability to include all findings and references identified in the 
notice of allowance. The examiner will cite references from the JPO 
search results in a Notice of References Cited form PTO-892 when the 
Notice of Allowability is issued to applicant. The Notice of 
Allowability with a completed Notice of References Cited form PTO-892 
also will be forwarded to JPO for further consideration by the JPO 
examiner of record for the corresponding JPO counterpart application.
    B. Pre-Interview Communication: If the examiner, after considering 
both sets of search results, determines that the application is not in 
condition for allowance, then the examiner will prepare and issue a 
Pre-Interview Communication (PTOL-413FP) and a Notice of References 
Cited (PTO-892) citing the prior art references, identifying any 
rejections or objections, and any designation of allowable subject 
matter. The examiner will cite references from the JPO search results 
in a Notice of References Cited form PTO-892 when the Pre-Interview 
Communication is issued to applicant. The Pre-Interview Communication 
with a completed Notice of References Cited form PTO-892 will also be 
forwarded to JPO for further consideration by the JPO examiner of 
record for the corresponding JPO counterpart application.
    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 VIII of this notice. The USPTO will permit an applicant to 
extend this time period for reply pursuant to 37 CFR 1.136(a) for one 
additional month in accordance with the First Action Interview Program, 
as set forth in section VIII, 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.

[[Page 39757]]

VIII. 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 any part of 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 as set forth in section VIII, subsection B(2), or section IX, 
subsection B(3), of this notice. This is because the examiner has 
already devoted a significant amount of time to the preparation of the 
Pre-Interview Communication. See 37 CFR 1.115(b) and MPEP Sec.  
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; 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--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, applicant should 
electronically file a letter requesting to not 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 Sec.  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 has been granted (one 
day before it appears in PAIR), withdrawal from the 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 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, 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, an 
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 VIII; subsection C (Failure to 
Respond to Pre-Interview Communication) of this notice. The interview 
may be in person, telephonic, or a video-conference. An applicant must 
provide written authorization to conduct any Internet email 
communications with the examiner. See MPEP Sec.  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 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 Sec. Sec.  713.01 III and 
713.04; see also MPEP Sec. Sec.  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

[[Page 39758]]

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. 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.
    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 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.

IX. 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 Sec.  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 both applicant and 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.

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, 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 also will be forwarded to JPO for consideration by the JPO 
examiner of record for the corresponding JPO 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 will also 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 an in-person 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, an 
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 JPO 
for consideration by the JPO examiner of record for the corresponding 
JPO 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 
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.

[[Page 39759]]

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 applicant's responsibility to make of 
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 Sec.  713.04.

    Date: 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. 2015-16846 Filed 7-9-15; 8:45 am]
 BILLING CODE 3510-16-P