Attachment to Change Worksheet for 0651-0031

ATTACHMENT TO CHANGE WORKSHEET FOR 0651-0031

The U.S. Patent and Trademark Office (USPTO) proposes to accelerate a petition activity relevant to existing form PTOL-413A Applicant Initiated Interview Request by allowing the applicant to submit a new form, PTOL-413C Request for First Action Interview, to request a pre-first Office action interview and attest to the concurrent submission of form PTO/SB/08a Information Disclosure Statement By Applicant.

PTOL-413C will allow patent applicants to obtain an accelerated interview prior to a first Office Action when they can meet the following conditions:

1. the application must contain three (3) or fewer independent claims and twenty (20) or fewer total claims;

2. the claims must be directed to a single invention;

3. the request must be accompanied by an Information Disclosure Statement (IDS) citing at least three (3) references that are deemed most closely related to the subject matter of each of the claims;

4. the applicant is agreeing not to request a refund of a search fee and excess claims fees paid in the application after the mailing of the search report prepared by the examiner; and

5. the form can only be submitted to the USPTO via EFS-Web.

This new form supports the USPTO’s strategic initiatives and goals for timely processing of what is expected to be an increase in patent applications over the next several years. Allowing applicants who meet certain criteria to enter into the interview stage of a first action upon request is expected to result in a more efficient processing of information collected from the applicant.

The USPTO, consistent with other proposed measures to increase the quality of examination while decreasing the pendency of applications, will insist that all information submitted by the applicant be of sufficient quality in order to assist the patent examiner in the examination of the application.

Currently, interviews prior to a first Office action are possible only in the following situations:

1. when the applicant makes an initial contact with the examiner to request an interview prior to a first Office Action;

2. when the applicant submits a Form PTO/SB/28 Petition to Make Special Under Accelerated Examination Program as part of a new application filing; or

3. when the examiner first contacts the applicant after determining that such an interview would advance prosecution of the application (see 37 CFR 1.133(a)(2)).

This new form would be used in situation (1) above when the applicant makes an initial contact with the examiner to request an interview prior to a first Office Action. Historical data indicates this situation occurs approximately 20 times in a fiscal year. Accompanying the submission of this new form would be an Information Disclosure Statement (IDS) citing at least three references.

It is estimated that the annual number of responses for this new form PTOL-413C Request for First Action Interview would total 1,000, with each response requiring an average of 2.5 hours to complete. Therefore, the USPTO estimates that there will be an increase in the annual burden for this submission of 2,500 hours as a program change, bringing the total annual burden hours to 3,727,291. The USPTO estimates that there will be no change in the annual (non-hour) cost burden for this collection.