How can the First Action Interview (FAI) pilot program save me money and time in getting a U.S. patent?

There is no denying it: the First Action Interview Pilot Program at the USPTO is controversial in U.S. patent law. However, if you play your cards right, you can save your company both time and money when applying for a utility patent.

The First Action Interview (FAI) Pilot Program began in 2008. Because of its success at efficiently processing applications, the program was extended into two more pilot programs and is still available today. The First Action Interview Program allows the applicant to conduct an interview with the examiner, even before the issuance of an Office Action. This is a stark difference from the standard process, which requires the applicant to wait until at least a first Office Action is issued to benefit from an interview. Best of all, the program is free. To qualify for the FAI program, the application can’t include more than twenty total claims , nor can the application include more than three independent claims. However, it is important to note that additional claims can be added after the interview.

How to Enter the First Action Interview Pilot Program

The process is fairly straightforward initially. He is a brief summary of how the program proceeds:

  1. Apply for a utility patent just like normal.
  2. Before the first Office Action, file a First Action Interview request. Use this one-page request form.
  3. If the examiner determines claims are not allowable, the applicant can opt to have an interview with the examiner before the first Office Action.
  4. If the applicant opts to have the interview, both the Examiner and the Applicant record interview summaries after the interview.

All requests for FAIs are granted so long as the basic requirements are met. See the requirements here.

The USPTO appears to be pleased with the program, but number applications utilizing the program are low, so the USPTO has made it quite easy to participate.

Think of an FAI like having an informational interview before submitting a resume to apply for a job. It allows you to frame the resume and add clarifying details through oral communication before an initial decision is made. This can be immensely valuable for the applicant and has proven to be valuable—although many still don’t recognize the value. 

One of the chief complaints about the First Action Interview program is that a summary is received after the first interview instead of receiving a full Office Action. This summary is often not detailed sufficiently to allow for a convincing response.  Then, the next Office Action received is typically final. This can clearly be problematic and it is an issue that attorneys who are not familiar with the process may encounter. However, an attorney experienced with the process can navigate the process to their clients’ advantage. 

Advantages of the First Action Interview Program in U.S. Patent Law

The advantages of the First Action Interview Program are numerous and include, among other things, the following: 

  • The applicant can help the examiner understand the broader field of technology and help them avoid committing to a technically incorrect position in an Office Action.
  • The applicant can direct the examiner to the most significant aspects of the claimed invention, allowing them to focus the first search and first Office Action on these points.
  • The examiner and applicant can resolve preliminary issues like restriction requirements, 101 statutory class issues, and 112(b) issues early.
  • The applicant can get to know the examiner and tailor later strategic decisions to the individual examiner.
  • The FAI facilitates a possible early allowance if an agreement can be reached with the examiner.
  • The FAI generally enables the advancement of prosecution of an application.
  • Faster prosecution time—FAI applications are allowed, on average, five months earlier than the average of all applications.
  • Higher success rates—3% more FAI applications are allowed in comparison to other applications.
  • Fewer Office Actions—in 2012, FAI applications averaged a little less than one OA, whereas the overall average was just less than two OAs.

At TraskBritt, we specialize in navigating our clients work through the hurdles of the patent application process quickly, using FAI to our advantage. We’ve personally seen that using FAI leads to faster prosecution, higher success rates, and fewer Office actions. That is a win for everyone.
Our clients retain us to help them acquire intellectual property protection. The FAI program increases our success rate and makes our clients happier. Let us help you take advantage of the FAI process.