Ways to Accelerate Patent Examination Before the USPTONovember 4, 2014

Long pendency, slow processing and delays in examination due to patent backlog before the United States Patent and Trademark Office (USPTO) are common concerns voiced by patent applicants. Although it may provide some comfort to know that backlogs are decreasing and overall examination timeframes are improving, many patent applicants remain frustrated while waiting in line for an average of nearly 19 months for a first Office Action, or an average of 27.5 months to receive a final disposition (e.g., Notice of Allowance, filing of a Request for Continued Examination, or abandonment).

Did you know there are options for patent applicants to expedite or advance the pace of patent prosecution with the USPTO? In fact, there are a number of different programs offered by the USPTO aimed at significantly decreasing the total time required for patent examination. Each of the programs have specific requirements and often government fees required. However, they may provide an enticing option for accelerating patent examination.

The various options and programs will be outlined in a series of blog posts describing each of the following: (1) the First Action Interview Pilot Program; (2) Track One Prioritized Examination; (3) Accelerated Examination; (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Today, the First Action Interview (FAI) Pilot is discussed.

The FAI expedites prosecution once the patent application is assigned to a patent examiner and that examiner begins examination of your application. This means that once an examiner searches your invention and is ready to provide an Office Action there is an accelerated pace of examination. However, up until that point there is no “special” treatment or acceleration. Under the FAI an examiner will issue a First-Action Interview Office Action under the program, which is best described a shortened version of a regular Office Action, as it gives an overview of any rejections and cites references from the prior art search. In general, this triggers a 30 day reply period to schedule an interview with the examiner and thereafter another expedited reply period to file a response. The interview between applicant and the examiner is aimed at reaching an agreement on allowable subject matter through discussion of the rejections. However, if no agreement is reached, then any subsequent Office Actions proceed in the normal fashion without further expedited handling.

Qualifications for the FAI program include a request to enter the FAI program prior to an examiner beginning work on a first substantive Office Action (which does not include a Restriction Requirement). An additional key requirement is the limitation to the number of patent claims in the application (no more than 3 independent claims and 20 total claims). Further detail of the requirements for the FAI program is available at the USPTO website .

Beneficially, there are no government fees to utilize the FAI pilot program. USPTO statistics from the Data Visualization Center also show in increased allowance rate for applicants using the FAI pilot program. In September 2014, there was a 30% allowance rate (at time of an application’s publication) under the FAI program as opposed to only 13% allowance rate for all other applications. Overall, this program may provide benefit in obtaining an early audience with the examiner and provide an opportunity to more promptly address patentability concerns.

The decision to utilize the FAI pilot program for a patent application will vary depending on many circumstances and should be discussed with your patent attorney.

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