The advantages and disadvantages of the First Action Interview program

February 19, 2015
Kenneth Horton
InsideCounsel

In the last several years, the U.S. Patent & Trademark Office (USPTO) has implemented the First Action Interview (FAI) program. Under the FAI program, an “Applicant” for a patent application may request an interview with the examiner prior to a first Office Action on the merits. The hope of the FAI program is that it will increase communication between the applicant and the examiner, thereby accelerating the examination process and reducing the backlog of patent applications at the USPTO.

The FAI program is a quick and easy tool for accelerating patent examination. As such, it should always be considered in the process of filing a patent application. But understanding the requirements and procedure of the FAI program will help guide the decision whether it is the best tool for any given patent application.

Requirements

  • The request to enter the FAI program must be filed electronically with the USPTO using the EFS-Web portal.
  • The request must be filed at least one day before a first Office Action on the merits is entered into the PAIR (patent application information retrieval) system.
  • The patent application must contain a maximum of three independent claims, 20 total claims and no multiple dependent claims. If the patent application does not meet these criteria, a preliminary amendment can be filed with the request to bring the application into compliance.
  • The claims in the application must be directed to a single invention and, therefore, not subject to a restriction requirement.
  • No fee is required to enter the FAI program. But any right to request a pre-examination refund of fees is waived upon filing of the request.

Procedure

  • The patent examiner will conduct a search and issue a pre-interview communication (PIC) that cites relevant prior art and identifies proposed rejections or objections.
  • The applicant is given one month (extendable by only one month) to cancel the request, respond to the PIC as if it were the first Office Action, or schedule the interview.
  • The interview must take place within two months of the mailing date of the PIC.
  • The applicant must file proposed amendments or remarks that are responsive to the PIC for an interview to be granted. Under certain conditions, these amendments and remarks may not be entered in the record.
  • The procedure after the interview depends on what the examiner and applicant agree to. But the end result is that the application then will enter the regular examination process.

Advantages

  • The FAI program can advance prosecution of the application and shorten the time for the application to issue. Some results have shown that, on average, applications in the FAI program issue 0.5 years earlier than applications not in this program.
  • The FAI program enhances interaction with the examiner. Indeed, the FAI program almost mandates interaction with the examiner.
  • The FAI program helps to resolve patentability issues with the patent examiner at the beginning of prosecution, rather than in the middle or end of prosecution, yielding cost savings to the applicant since the back-and-forth correspondence with the examiner is reduced.
  • The FAI program facilitates early allowance. Early statistics indicated that 30-34 percent of applications in the FAI program were allowed prior to the first Office Action, compared to 11 percent for applications not in the program.

Disadvantages

  • There is a shortened reply period and limited extensions in the FAI program. If this reply period is not watched and docketed correctly, the application could become abandoned.

Several thousand patent applications have been through the FAI program. The USPTO reported that at the end of 2013, 75 percent of those applications were allowed or issued, 16 percent were still pending, and only 9 percent were abandoned. Given such statistics, a request for entering the FAI program should be on your checklist of action items to consider when filing your patent application.

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