[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]
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