Is the First Action Interview Pilot Program Worth It?

In our analysis, we found that the First Action Interview Pilot Program (FAIPP) may not result in a faster prosecution, but it is effective in reaching an allowance with fewer office actions.

The original idea for the FAIPP was inspired by issues concerning interview effectiveness. The first version of the program (2008) allowed applicants to resolve patentability issues with the examiner early in the process, encouraging a speedy review. And a second version of the program, the Enhanced First Action Interview Pilot Program (2009), had limitations on technology area and filing date. The current version (starting May 2011) removed those limitations, freeing it up to all applicants who meet certain requirements.

After reviewing a pre-interview communication that shares results of a prior art search conducted by the examiner, attorneys can discuss any obvious issues (like the examiner interpreting claims in a way that wasn’t intended) that should, in theory, get an allowance faster (either immediately or through a much more favorable first office action).

Most of the time, if you want to speed up prosecution at the USPTO, you'll have to pay for it. For example, the Track One program requires payment of additional fees. Even the Patent Prosecution Highway, which lacks any fee requirement, involves the expense of submitting an application to an office of first filing. The FAIPP, however, has no additional fees (aside from the expected attorney fees involved with filing and preparing for and conducting interviews) and often results in a faster consideration of applications.

So, is the First Action Interview Pilot Program worth it?

We reviewed applications filed between 2012-2018 containing an FAIPP request (Doc Code: FAI.REQ). Additionally, we looked specifically at applications receiving a Pre-Interview First Office Action (Doc Code: OA.FAI.PRELM), meaning they were actually enrolled and participating in the program. Here is what we discovered:

The popularity of the program has grown, with the number of requests increasing each year (with a slight dip in 2017). This makes sense, as over time, patent practitioners become more aware of the program and its benefits.

Still, FAIPP requests make up a small portion of applications at the USPTO. In 2019, just 4,345 applications requested to enter the program of 367,649 apps filed at the USPTO. That’s only 1.2% of all filed apps last year.

Comparing the document codes, we can see that about 59% of applications requesting enrollment (Doc Code: FAI.REQ) received a Pre-Interview First Office Action (Doc Code: OA.FAI.PRELM), leading to the next step in the process.

Perhaps some of the other applications did not meet the program requirements, but it’s also possible that, in some cases, applications instead received a notice of allowance and did not need to continue this prosecution path.

Applications enrolled in the program had an average allowance rate of 87.7%, higher than the applications that did not participate (74.7%). This may speak to both the confidence IP teams have in the applications they are submitting, as well as the success of the program.

FAIPP-enrolled applications typically have a higher allowance rate (76.2%) and lower abandonment rate (11.8%) than those not enrolled (70.9% allowed and 19.0% abandoned). The unenrolled apps mirror the USPTO average.

Since the FAIPP is all about more efficient interviews, we expected that this would ultimately result in a faster prosecution. However, we found that applications enrolled in the program take an average of one month longer to reach an allowance than those not in the program, at 24.3 months vs. 23.3 months. So the FAIPP may not be faster, necessarily, but the next finding shows it may still be more efficient. 

Even with that longer timeline, FAIPP applications are usually decided without final/non-final rejections, restriction requirements, and Ex parte Quayle actions. They average 0.8 fewer OAs per application than those not in the program, at 0.8 OAs vs. 1.6 OAs. When it comes to more efficient and effective OA responses, the program seems to be working!

From our analysis, we found that the First Action Pilot Program may not result in a faster prosecution, but it is effective in reaching an allowance with fewer office actions. 

• Applications enrolled in FAIPP take a slightly longer amount of time to reach allowance than those not enrolled, at 24.3 months vs. 23.3 months. 
• From 2012 to 2018, applications enrolled in FAIPP had a higher annual allowance rate than those not enrolled.
• And finally, applications enrolled in FAIPP receive fewer office actions than those not enrolled, at 0.8 OAs vs. 1.6 OAs. 

Evaluating programs like FAIPP is integral to conducting a strategic and cost-effective prosecution. Juristat's patent analytics include a document code filter to help patent practitioners isolate these applications and better understand these special USPTO programs. Who knows? You may discover an opportunity for a faster prosecution or higher chance of allowance. 

Is there another USPTO program you would like to explore? We’d be happy to take a look with you.