The U.S. Patent and Trademark Office initiated its First Action Interview Pilot Program in April 2008 as part of its efforts to reduce pendency and improve patent quality.
The concept was simple enough: An examiner assigned to a patent application would conduct a prior art search and provide the applicant with a pre-interview communication containing a preview of objections or rejections against their claims. Within 30 days, the applicant would either schedule a “first action interview” (FAI) or decide not to have the interview and proceed with the patent examination.
Since that time, the program has been expanded to encompass additional technology areas, revised to include utility non-provisional applications that were filed later than the original dates, and eventually broadened to include all utility applications in all technology areas and filing dates.
Five years after the launch of this innovative program, thousands of participating applications have been submitted to the USPTO. The results of the program to date are given a thorough assessment in a compelling article published in Law360 by Kate Gaudry, Ph.D., an associate at Kilpatrick Townsend & Stockton LLP. Gaudry’s research was made possible by reviewing data surfaced by LexisNexis PatentAdvisor.
Here are some highlights of Gaudry’s conclusions:
- A significant number of patent applications filed under the FAI program were issued when compared to issuance rates of non-FAI applications submitted to the same examiners.
- Within the FAI program, half of all applications issued about a year sooner than those applications assigned to the same examiners outside of the FAI program.
- There were fewer USPTO office actions for FAI applications than non-FAI applications submitted to the same examiners.
- The estimated cost to prosecute an average patent application filed under the FAI program was much lower than the average estimated prosecution costs for patent applications filed outside of the program.
Gaudry’s research provides some empirical evidence that a preliminary discussion with USPTO patent examiners goes a long way toward improving an applicant’s odds of having a patent issued, and obtaining that patent requires less time than would otherwise be the case.