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First Action Interview Pilot Program: Good Idea, Flawed Process

First Action Interview Pilot Program: Good Idea, Flawed Process published on No Comments on First Action Interview Pilot Program: Good Idea, Flawed Process

Interviews between applicants and examiners can be very productive for moving cases through prosecution. Accordingly, the USPTO has implemented a First Action Interview Pilot Program (“FAIP”), in which applicants and examiners conduct an interview before the first action on the merits. This objective is sound: an open conversation, before the examiner has established a position, can educate the examiner about the invention, and allow the examiner to focus the first search and the first office action on the most important claim elements.

However, as currently implemented, the program exhibits significant disadvantages that diminish the achievable rewards. Indeed, an application that is enrolled in the First Action Interview Pilot Program (FAIP) may incur significant disadvantages over ordinary examination that exceed the benefits of the program.


The USPTO recognizes that interviews between examiners and applicants are a key ingredient for efficient patent examination and prosecution. To this end, the USPTO has taken steps to encourage both examiners and applicants to utilize interviews, such as providing resources for videoconference interviews, and providing training materials for interviews. However, the USPTO is cautious about balancing the advantages of interviews with other considerations, such as establishing consistent administrative procedures; allocating and tracking examiner productivity (i.e., ensuring that interviews are a productive use of examiners’ time); and making patent examination occur largely on the public record. 1

In view of these considerations, the USPTO has implemented two specific programs to promote the interview process. The After Final Consideration Pilot Program (“AFCP 2.0”), which enables interviews after a final office action, is a topic for another day.

The First Action Interview Pilot Program (“FAIP”) provides an opportunity for the examiner and practitioner to interview an application before the first office action on the merits. The advantages of an early interview are numerous:

  • The applicant can help the examiner to understand the field of technology, the invention, and the most significant claim elements. This is especially helpful for avoiding situations where the examiner commits to a position that is technically inaccurate, where the examiner may later find it difficult to admit a persistent error (particularly after several office actions) that requires radically changing course, issuing second non-final office actions, or allowing the application without further claim amendments.
  • The examiner can orient the first search and the first office action toward the most significant aspects of the claimed invention. More searching and review can be done of the key points of novelty. Conversely, the examiner can conduct a more cursory evaluation of claim elements that the applicant does not intend to rely on for novelty and non-obviousness.
  • The examiner and applicant can resolve preliminary issues (e.g., restriction requirements, 101 statutory class issues, and 112p2 antecedent basis issues spotted by the examiner) even before examination begins in earnest.
  • The applicant can develop an understanding of the examiner – e.g., the examiner’s technical background, examination proficiency, attention to detail, supervisory oversight, etc. – which may affect many strategic decisions about the application.

At first glance, the First Action Interview Pilot Program seems like a good (and free!) option for promoting prosecution. The program begins with a one-page request form (form PTO/SB/413C), filed any time before the first office action on the merits. Later, the applicant submits an interview agenda; the applicant and examiner schedule and conduct the interview before the first action on the merits; and interview summaries are filed.

Unfortunately, the current implementation of the First Action Interview Pilot Program creates a significant administrative framework around this process. In addition to increased administrative complexity, this framework limits, and in some cases contravenes, the goals and advantages of this program. In some respects, applicants may find themselves in a worse position after completing the FAIP interview than if ordinary examination had occurred.

The disadvantages of the First Action Interview Pilot Program include:

  • The administrative framework of the program is surprisingly complex.

    Here is the typical examiner interview process:

    1. Call examiner and schedule interview.
    2. Submit form PTOL-413A and an interview agenda.
    3. Attend the interview.
    4. The examiner files an interview summary; the applicant files an interview summary, or includes one in next reply.

    And here is the process for completing a FAIP Interview:

    The complexity of the program damages its utility. The program requires extensive examiner training, and careful attention to nuances such as deadline calculation. Miscommunication and misunderstanding raise questions about the status of an application and the available options, and opportunities for errors abound. 2

  • The pre-interview requirements of the First Action Interview Pilot Program directly conflict with the central purpose of the program.

    Between the enrollment of the application and the FAIP interview, the program requires examiners not only to conduct an initial examination, but to file a “Pre-Interview Communication” setting forth the grounds of objection and rejection that the examiner intends to issue, and the references that the examiner intends to use. However, a search cannot be conducted until the examiner has reviewed the application and formulated an understanding of its content. The requirements placed on the examiner – the search, initial determination, and a completed Pre-Interview Communication form – require the examiner to develop and invest in an opinion of the case by the time of the interview. Even if that position is not an actual commitment, it is only a matter of degree – e.g., 75% of the work done for a first office action, rather than 100%. And even if the examiner’s position is demonstrably incorrect, the examiner is reluctant to admit error, abandon all of the previous work, and start from scratch.

    In other words, these requirements make the FAIP interview look much less like a pre-examination interview, and much more like a slightly earlier first-office-action interview.

  • Between the completion of the interview and the first office action, applicants cannot file preliminary claim amendments as a matter of right.

    During many FAIP interviews (indeed, the most productive ones!), an applicant and examiner might tentatively agree that some claim amendments will enable progress in the case, without agreeing on specific claim amendments. And yet, the First Action Interview Pilot Program refuses the entry of amendments at the applicant’s discretion until the first office action is issued. 3 During this period, amendments are admitted solely at the examiner’s discretion – and many examiners will refuse to consider any amendments during this time that might require additional work to complete the first office action.

    This constraint creates a surprising disadvantage of the First Action Interview Pilot Program, as compared with ordinary examination. For non-enrolled cases, the applicant can conduct an ordinary pre-first-office-action interview with the examiner, and then enter preliminary claim amendments and arguments as a matter of right. Even if the examiner does not agree with them, the examiner is obligated to enter them into the record, and account for them in the first office action – thus enabling progress in the application. The FAIP rules restrict this practice, and only permit such shifts after the first office action on the merits.

    In the Full First Action Interview (FFAI) Notice, the USPTO has explicitly stated the reason for this restriction: “The examiner has devoted a significant amount of time to the preparation of the Pre-Interview Communication.” However, this same problem could arise at any time, for any non-finally-rejected application – and there is no indication that this is a significant problem (or more than a rare occurrence) outside of the FAIP process. Moreover, this predicament is self-imposed and exacerbated by the administrative framework of the First Action Interview Pilot Program! If the program did not require the examiner to conduct all of this pre-interview searching, claim amendments could be entered that enable the examiner to avoid wasting time in the first place. By prohibiting this interaction, the FAIP program obstructs prosecution – in order to conserve examiners’ effort in completing the first round of examination. 4

  • The First Action Interview Pilot Program may yield much less information about the examiner’s position than an ordinary first office action.

    The “First Action Interview Office Action Summary” (PTOL-413FA) – which the examiner completes after the interview, and which concludes the First Action Interview Pilot Program – is a simple, two-page form. The first page is the typical cover sheet for an office action; the second page is substantively identical to the “Pre-Interview Communication,” with small textboxes where examiners enter their grounds of rejection. And yet, the PTOL-413FA is the first non-final action on the merits. 5

    The consequences of this difference are quite profound:

    • An ordinary non-final office action is typically 15-20 pages (sometimes much longer), and provides an extensive description of the rejection: a rejection of each individual claim, citing a specific legal test, and often specific parts of cited references, as well as extensive remarks explaining the examiner’s position. Even though office actions are usually insufficient for a full understanding of the examiner’s position, they provide some basis for an assessment of the merit of the examiner’s position. By contrast, PTOL-413FA form only permits (and in fact, requires!) the examiner to set forth the grounds of rejection in an extremely cursory manner, such as: “Claims 1-20 rejected in view of Reference A (see paragraph [30]).” Indeed, examiners often copy-and-paste the information from the nearly-identical Pre-Interview Communication Form into the First Action Interview Office Action Summary. As a result, the FAIP creates a significant disadvantage to the application, as compared with the ordinary course of examination.

    • The characterization of the PTOL-413FA form as the full first action on the merits requires the applicant to provide an extensive reply to a cursory rejection – which raises concerns about estoppel, and having to guess at the examiner’s rationale. 6 This is a troubling reversal of the examination process: in the reply, the applicant may have to explain the examiner’s prima facie case, on the record, in order to present arguments that refute it.

    • Because most rounds of prosecution involve only one non-final office action, the first time that an applicant will receive a fully detailed office action is the final office action.

  • The invocation of the First Action Interview Pilot Program can be inefficient and unfair to the examiner.

    According to the rules of the program, a request to enroll an application in the First Action Interview Program must be honored if it filed “at least one day before a first office action on the merits appears in PAIR.” However, first actions on the merits require extensive work, even after the examiner has decided how to proceed. If the applicant files the FAIP Request (or the examiner first notices it in PAIR) when the first action is 50% written, the examiner has to change course and start working on the FAIP Pre-Interview Communication instead. 7 And by the time the examiner is ready to write up a formal (second) office action, the posture of the case may have substantially changed, and the examiner may have to discard the earlier work on the first office action on the merits. The timing and mandatory acknowledgment can be unfair to examiners, and inefficient for the process.

  • The First Action Interview Pilot Program promotes an inappropriate use of restriction requirements.

    Restriction requirements are appropriate “only if they are able to support separate patents and they are either independent” – i.e., such different subject matter that requiring the examiner to search and examine all of these variations is unduly burdensome. Occasionally, examiners try to use restriction requirements to lessen their workload, or to increase their productivity by earning multiple counts for examining the same claim set spread over multiple applications. Of course, these tactics come at the applicant’s expense, and it is worthwhile to traverse rejections that are inappropriate.

    The First Action Interview Pilot Program shifts this balance: if the applicant chooses to traverse a restriction, the application is automatically removed from the First Action Interview Pilot Program. A restriction requirement is non-traversable if the applicant wants to remain in the program. This shift in leverage can impose an unfair disadvantage to the applicant – and forces cases out of the FAIP program that would otherwise benefit from it. While the rule seems intended to constrain the time frame for the FAIP interview process, the costs of this rule seem to outweigh this reasonable goal.

These flaws are disappointing, because the original intent of the First Action Interview Pilot Program remains a compelling objective. The program should be heavily revamped to reduce the administrative complexity, tweak rules that unreasonably shift the balance of the examination process, and better serve the goals of pre-action interviews.

Until the program is redesigned, applicants should carefully study and consider the details before enrolling cases in the First Action Interview Pilot Program.


Notes:

  1. The USPTO’s interest in capturing a written record of prosecution often conflicts with the interests of examiners and practitioners to discuss the application in a casual and open manner, since formality can interfere with open communication. For instance, examiners and applicants often want the interview summary to be very basic (“the examiner and counsel for the applicant discussed the claims and the references”), but USPTO administrators prefer more detailed interview summaries of the issues discussed, exhibits reviewed, etc.

    This tension came to light during a discussion at the NAPP 2014 Annual Meeting & Conference. The USPTO expressed the opinion that any claim amendments submitted in writing to the examiner are to be made part of the public record of the application. Practitioners quickly balked at this suggestion as potentially raising prosecution history estoppel issues, and began suggesting alternatives: “What if I read my proposed amendments to the examiner over the phone? What if I fax an image of handwritten claim amendments to the examiner? What if I show the examiner a sheet of paper containing my claims during a videoconference?”

  2. Errors that can arise from the FAIP administrative process include:

    • Applicants who don’t follow the requirements of enrollment may be surprised to learn – after the fact – that their their cases are not enrolled. However, these requirements are not always crystal-clear. For example, the fine print on the form reads:

      Any comments on the amount of time required to complete this form… should be sent to the Chief Information Office at: (mailing address #1). DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, (mailing address #2).

      And yet, the instruction sheet for the pilot program reads:

      The request (to enroll the application in FAIP) must be filed electronically using the Office’s electronic filing system, EFS-Web.

      Another significant discrepancy: Form PTOL-413FA indicates a two-month reply period for the First Office Action, but the Full First Action Interview (FFAI) Notice indicates only a thirty-day reply period. (For the record, a two-month reply period seems to be the USPTO’s operating practice.)

    • It is not uncommon for applicants to receive an ordinary first office action, despite having enrolled the application months or years prior – because the examiner either did not notice the enrollment request in PAIR, did not understand the mandatory nature of the enrollment, or simply chose to disregard it. Identifying and correcting the error creates embarrassment and tension between the applicant, the examiner, and the examiner’s supervisor.

    • Examiners frequently confuse the “Pre-Interview Communication Form” (PTOL-413FP), the “First Action Interview Office Action Summary” (PTOL-413FA), and an ordinary non-final office action. One form may be accidentally used for the wrong purpose, or the same form may be filed for both purposes. Examiners might prepare a regular non-final office action in addition to or in lieu of the office action summary form, which may be compiled together and filed with the “office action summary,” or may be filed separately. These discrepancies create irregularities in the PAIR record, where the title of an entry does not match the type of document, or where the same document is refiled multiple times. These PAIR errors can also affect docketing, since a “First Action Interview Office Action Summary” has a two-month reply period, but might appear in PAIR as a “Non-Final Office Action” with a three-month reply period.

    • A minor complaint, but significant annoyance, is that the FAIP forms (PTOL-413FP and PTOL-413FA), like many USPTO fillable PDFs, are difficult to fill in, and produce subpar readability. Even given the very terse nature of the PTOL-413FP / PTOL-413FA forms, it’s often difficult for applicants to read and understand even these brief shreds of information.

    Because of these issues, examiners frequently complain that they do not like or understand the First Action Interview Pilot Program. Even today, four years after the current “Full” First Action Interview Pilot Program was opened and seven years after the “original” First Action Interview Pilot Program of 2008, examiners still do not consistently understand or follow the program.

  3. According to the Full First Action Interview (FFAI) Notice:

    VII. Post Pre-Interview Communication

    A. Amendments Filed After Pre-Interview Communication

    Once a Pre-Interview Communication has been entered in an application, applicant no longer has a right to amend the application until the first action interview is conducted and the First Action Interview Office Action is mailed. Therefore, any amendments filed before the interview and the mailing or notification date of a First Action Interview Office Action (PTOL-413FA), will not be entered, unless approved by the examiner or in accordance with the procedure of the Full First Action Interview Pilot Program in section VII, subsection B(2), or section VIII, subsection B(3), of this notice. … The Office may enter the amendment if it is clearly limited to: cancellation of claims; adoption of examiner suggestions; placement of the application in prima facie 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.

  4. These types of administrative decisions are troubling, because this prioritization of process efficiency over real, substantive prosecution progress created severe prosecution backlog and “churn” during the Dudas administration’s term, which the USPTO continues to struggle to reduce.
  5. According to the Full First Action Interview (FFAI) Notice:

    The First Action Interview Office Action (PTOL-413FA) is the first Office action on the merits because it sets forth all requirements, objections and grounds of rejection including the identification of the prior art references, statutory basis for the rejection, and the claims being objected to or rejected.

  6. It could be argued that while the PTOL-413FA may not fully inform the applicant of the examiner’s position, the applicant should gain an understanding of it through the interview process. However, many examiners don’t say much during the FAIP interview: they simply listen to the applicant’s arguments, and then say, “I will take them into consideration.” The applicant may have learned little or nothing about the examiner’s position during such interviews.
  7. In some instances, an examiner may only notice the FAIP enrollment request after finishing and uploading the reply. And unless the applicant waives the enrollment, the examiner is required to back up and complete the entire FAIP process – starting with preparing a pre-interview communication, etc.

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