New Opportunity For Patent Applicants.

USPTO SealPatent examiners necessarily have a limited time to spend on each patent application and may miss the point of an invention or of the prior art.  An interview between the applicant and the examiner, either by phone or in person, can be a useful way to educate the examiner.  Under the current system, the only opportunity for an interview comes late in the review process.  Correcting the examiner’s misperceptions late in the process frequently requires the applicant to file a ‘request for continuing examination’ and to undergo the resulting cost and delay.

In a pilot program that began May 16, 2011, any patent applicant can have an interview with the patent examiner early in the process BEFORE the examiner issues the first office action.  This pilot program will run for one year.  There are requirements, principally that the application have no more than three independent claims and twenty claims total and that the applicant agree to shortened times for response.  The notice from the PTO is unclear as to whether the applicant is entitled to a second interview with the examiner after the office action is issued.

The pre-action interview program does not accelerate examination and review will take just as long as before.  The pilot program nonetheless has the advantage of increasing the effectiveness of patent examination and reduce the ultimate cost of prosecuting a patent application.   We recommend that you consider a pre-action interview for your patent application.

– Robert Yarbrough, Esq.

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