Compact prosecution—that is, reaching a final disposition as quickly as possible—while preserving quality of examination is a high priority for the USPTO and for applicants. Efficient prosecution requires that:
• The examiner understand the invention. Accurate understanding allows the examiner to appropriately focus a prior art search (e.g., to target art applicable, not only to the current claims, but also to potential claim amendments) and to detect allowable subject matter; and
• Applicants draft claims to be reasonably and clearly focused on the invention. Overly broad claims require the examiner to cite art, potentially from non-analogous fields, that does not pertain to an invention but does apply to a pending claim.
Thus, efficient prosecution requires both the examiner and applicant to understand the invention and the breadth of pending claims. Establishing these understandings early in prosecution should aid in reaching a final disposition more quickly.
First Action Interview Program
In 2011, the USPTO launched the Full First Action Interview Pilot Program. In this program, examiners perform a search and issue a “Pre-Action Communication” that very briefly outlines contemplated rejections. The applicant can then, prior to any office action, participate in an interview with the examiner to discuss the preliminary rejections.
These early discussions can enhance an examiner’s understanding of the invention before the examiner writes up a complete office action. Further, these discussions can provide applicants with insights as to whether pending claims may be too broad. Statistical analyses have shown that this program indeed improves examination efficiency, as it reduces application pendency and office action counts. 3
Nonetheless, there are two key, related problems with this program. The first is that the interview is conducted after the examiner has performed a search. Thus, an examiner who did not properly understand the claimed technology may have already devoted time to searching the mistaken claim interpretation.
Second, because the examiner performs a search prior to the interview, applicants are limited in their ability to amend the claims. Entering amendments can cause the next office action to be declared final. Therefore, during the interview, the applicant and examiner may discuss the claims and agree that one or more claim limitations are unclear, unsupported, or broader than intended. However, applicants cannot thereafter amend the claims without risking that the next (and first) office action be made final.
Proposal: Initiate a Pre-Search Interview Program
Therefore, we propose initiating a corollary of the First Action Interview Program: a Pre-Search Interview Program. We propose that, for applications enrolled in the program, applicants be sent a notice when the examiner is ready to begin examining the application. Similar to the First Action Interview Program, the applicant would be given one month to schedule an interview and file an Interview Request, and the interview should be conducted within two months from the filing date of the Interview Request.
The focus of the interview should be for the applicant to explain the invention and for the applicant and examiner to consider whether the claim language appropriately corresponds to the described invention. The examiner should identify indefiniteness-type issues during the interview, as well as any claim terminology that the examiner believes may be interpreted differently or more expansively than the applicant intended.
Following the interview, the applicant should be afforded a two-week period to submit any preliminary amendments to be entered as a matter of right. The subsequent examination should proceed as normal, with any office action serving as a first, non-final office action.
This program should ensure that initial searches are directed to claims that are clear and correspond to their intended scope. This claim focusing should improve the quality of the initial search and office action. Further, this program should help examiners understand the invention and address any confusion early during prosecution. This should improve search and action quality, and should further save the examiner time. Rather than needing to analyze an entire specification to understand an underlying invention, the examiner should be able to more briefly review the specification to ensure that the description is consistent with (and enables) the invention as explained by the applicant.
In summary, the proposed Pre-Search Interview Program should improve PTO efficiency, promote clear and reasonably focused claims, and decrease application pendency.
- A prior version of this comment was submitted to the U.S. Patent and Trademark Office on May 6, 2015, in response to its Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015).
- This comment is also supported by Matthew Kitces, Richard Almon, Angel Lezak, Adam J. Gianola, and Thomas Franklin. It is attributable only to the author and indicated supporters, and does not represent the opinions or beliefs of any other individuals, companies, or organizations.
- Kate S. Gaudry, A Look at the Results of USPTO’s Interview Program, Law360 (Jan. 9, 2014, 6:22 PM), http://www.law360.com/articles/494769 [https://perma.cc/5BP4-S6BR].