What First Action Interview is not

Let’s first clarify what the First Action Interview (FAI) program does not do. The FAI program does not apply to design patent applications which require a design Rocket Docket request. The FAI program also does not shorten the waiting time for the first Office Action, also known as First Office Action pendency. To reduce First Office Action by taking cases out of turn, consider a Track One request for prioritized examination or a petition to make special based on the applicant’s age or health, if applicable.

What is the First Action Interview program?

The bottom line of FAI is that the program gives the applicant an opportunity to receive a prior art search and talk to the Examiner before the official first Office Action. These two benefits bear emphasis:

  1. sneak peek at prior art found by the Examiner; and
  2. an interview with the Examiner to discuss the prior art and proposed claim amendments.

The FAI program gives the applicant both advantages above all before the first Office Action is issued. Under normal circumstances, Examiner interviews are typically requested by the applicant after receiving a first Office Action on the merits. The benefit of the First Action Interview Pilot Program is that an applicant gets an extra bite at the apple – an opportunity to see how the claims are viewed and to interview the examiner – before the first Office Action on the merits.

How does FAI speed up a patent application?

Here’s the sequence of the FAI pilot program:

1) An applicant must request a First Action Interview prior to the first Office Action on the merits, which does not include a pure Restriction Requirement;

2) The examiner conducts a prior art search and either allows application or issues a Pre-Interview Communication citing relevant prior art and identifying proposed rejections or objections;

3) Within 30 days of the Pre-Interview Communication, the applicant schedules an interview;

4) The interview is conducted;

5) An allowance might result from the interview;

6) If an allowance does not result from the interview, the examiner will issue a First Action Interview Office Action with an Interview Summary which will constitute a first Office Action on the merits. The remaining prosecution of the application would proceed as normal.

Therefore, the applicant receives the benefits of a search and an interview – all before the first Office Action.

The USPTO website has a resource page on the FAI program here.

Is there a USPTO fee for a First Action Interview request?

No, there are no USPTO fees for requesting First Action Interview.

When should FAI request be filed?

The FAI request must be filed before the first action on the merits. The USPTO provides predictions of first Office Actions in nonprovisional applications, but those predictions tend to be inaccurate. In our experience, first Office Actions have been arriving much sooner than the predicted dates. We, therefore, encourage filing FAI requests as soon as possible, if desired.

Why not request First Action Interview?

If you want to speed up your utility patent application, FAI makes sense because it can potentially reduce at least one Office Action during the course of prosecution. Since FAI will not shorten the pendency for the first Office Action, applicants might want to consider Track One if they’re willing to pay the significantly higher USPTO fees.

FAI will not be eligible for patent applications with excess claims. However, FAI might become an option in response to a Restriction Requirement where enough claims are withdrawn so as to meet the claim limits.

What are the claim requirements for the First Action Interview program?

A nonprovisional patent application must have no more than 3 independent claims and 20 claims total. Multiple dependent claims are not allowed. A Preliminary Amendment may be filed concurrently with the Request for First Action Interview to reduce excess claims, and amend or cancel any multiple dependent claims.

The FAI program also requires that all claims are directed to a single invention. This would mean that if a Restriction Requirement is issued, an election must be made without traverse.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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