80_FR_39543 80 FR 39412 - United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program

80 FR 39412 - United States Patent and Trademark Office and Korean Intellectual Property Office Collaborative Search Pilot Program

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 80, Issue 131 (July 9, 2015)

Page Range39412-39418
FR Document2015-16850

The United States Patent and Trademark Office (USPTO) is initiating a joint Work Sharing Pilot Program with the Korean Intellectual Patent Office (KIPO) to study whether the exchange of search reports between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. In the pilot program, each office will concurrently conduct a prior art search for its corresponding counterpart application. The search report from each office will then be exchanged between offices before either office issues a communication concerning patentability to the applicant. As a result of this exchange of search reports, the examiners in both offices may have a more comprehensive set of references before them when making an initial patentability determination. Each office will accord special status to its counterpart application to first action. First Action Interview (FAI) pilot program procedures will be applied during the examination of the U.S. application and make the Korean search report of record concurrently with the issuance of a Pre-Interview Communication.

Federal Register, Volume 80 Issue 131 (Thursday, July 9, 2015)
[Federal Register Volume 80, Number 131 (Thursday, July 9, 2015)]
[Notices]
[Pages 39412-39418]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2015-16850]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2015-0026]


United States Patent and Trademark Office and Korean Intellectual 
Property Office Collaborative Search Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
initiating a joint Work Sharing Pilot Program with the Korean 
Intellectual Patent Office (KIPO) to study whether the exchange of 
search reports between offices for corresponding counterpart 
applications improves patent quality and facilitates the examination of 
patent applications in both offices. In the pilot program, each office 
will concurrently conduct a prior art search for its corresponding 
counterpart application. The search report from each office will then 
be exchanged between offices before either office issues a 
communication concerning patentability to the applicant. As a result of 
this exchange of search reports, the examiners in both offices may have 
a more comprehensive set of references before them when making an 
initial patentability determination. Each office will accord special 
status to its counterpart application to first action. First Action 
Interview (FAI) pilot program procedures will be applied during the 
examination of the U.S. application and make the Korean search report 
of record concurrently with the issuance of a Pre-Interview 
Communication.

DATES: Effective Date: September 1, 2015.
    Duration: Under the United States-Korean Collaboration Pilot (US-KR 
CSP) program, the USPTO and KIPO will accept petitions to participate 
for two years from its effective date. During the pilot program, each 
office will be limited to granting 400 petitions. The offices may 
extend the pilot program (with or without modification) for an 
additional amount of time, if necessary. Both offices reserve the right 
to terminate the pilot program at any time.

FOR FURTHER INFORMATION CONTACT: Daniel Hunter, Director of 
International Work Sharing, Planning, and Implementation, Office of 
International Patent Cooperation, by telephone at 571-272-8050 
regarding the handling of any specific application participating in the 
pilot. Any questions concerning this notice may be directed to Joseph 
Weiss, Senior Legal Advisor, Office of Patent Legal Administration, by 
phone (571) 272-7759. Any inquiries regarding this pilot program can be 
emailed to csp@uspto.gov.

SUPPLEMENTARY INFORMATION: 

I. Background

    The USPTO is continually looking for ways to improve the quality of 
issued patents and to promote work sharing between other Intellectual 
Property (IP) Offices throughout the world. The USPTO has launched 
several work sharing pilot programs in recent years (e.g., numerous 
Patent Prosecution Highway Pilot Programs). In furtherance of promoting 
interoffice work sharing, the USPTO and KIPO will cooperate in a study 
to determine whether work sharing between IP offices, in the form of 
exchanging the results from independently performed concurrent 
searches, increases the efficiency and quality of patent examination. 
This exchange of search reports would occur prior to making 
determinations regarding patentability. Work sharing benefits 
applicants by promoting compact prosecution, reducing pendency, and 
supporting patent quality by reducing the likelihood of inconsistencies 
in patentability determinations (not predicated upon differences in 
national patent laws) between IP offices when considering corresponding 
counterpart applications.
    Currently, an application filed in the USPTO with a claim of 
foreign priority may have a search report and art cited by the foreign 
office in the priority application provided to applicant during the 
U.S. application's pendency. After review of the search report and 
cited art, an applicant may submit an Information Disclosure Statement 
(IDS) in the U.S. application to provide the information to the USPTO. 
Often this submission occurs after examination on the merits is already 
underway in the U.S. application. Upon evaluation of the search report 
and cited art, the U.S. examiner may determine that the art cited by 
the foreign office is relevant to patentability and merits further 
examination before making a final determination on patentability. The 
delay caused by further examination results in additional costs to an 
applicant and the USPTO that could have been avoided if the U.S. 
examiner was in possession of the foreign office's search results 
before commencing examination of the application. Furthermore, in light 
of the various expedited examination programs currently in place, the 
potential exists that a U.S. application may reach final disposition 
before an applicant is in receipt of a foreign office's search report. 
Work sharing between intellectual Property (IP) offices in the form of 
an exchange of search reports may increase efficiency and promote 
patent examination quality by providing the examiner with both offices' 
search reports when examination commences. In order to study the 
benefits of the exchange of search reports between offices, current 
USPTO examination practice would need to be modified to conduct a 
search and generate a search report, without issuance of an Office 
action. The U.S. application also would need to be ``made special'' 
pursuant to USPTO procedures to ensure that it could be 
contemporaneously searched with its corresponding counterpart 
application.
    The USPTO is using the First Action Interview Pilot Program (FAI) 
in this

[[Page 39413]]

search report work sharing pilot program because its procedure 
bifurcates the determination and evaluation of a prior art search from 
the notice of rejection. See Full First Action Interview Pilot Program, 
1367 Off. Gaz. Pat. Office 42 (June 7, 2011). Under the FAI pilot 
program, participants receive a Pre-Interview Communication providing 
the results of a prior art search conducted by the examiner. 
Participants then have three options: (1) File a request not to conduct 
a first action interview; (2) submit a reply under 37 CFR 1.111 after 
reviewing the Pre-Interview Communication; or (3) conduct an interview 
with the examiner. Participants in the FAI pilot program experience 
many benefits including: (1) The ability to advance prosecution of an 
application; (2) enhanced interaction between applicant and the 
examiner; (3) the opportunity to resolve patentability issues one-on-
one with the examiner at the beginning of the prosecution process; and 
(4) the opportunity to facilitate possible early allowance.
    The US-KR CSP program differs from the FAI pilot program procedure 
by requiring a Petition to Make Special for the participating 
application, and providing for the exchange of information with KIPO at 
different stages of prosecution as set forth in this notice.
    The USPTO also is initiating a joint Work Sharing Pilot Program 
with the Japan Patent Office (JPO). The KIPO and JPO pilot programs are 
different in the way that they operate. Thus, while there may be 
applications that are eligible for both work sharing pilot programs, 
such applications will not be permitted to participate in both pilot 
programs due to the differences in work sharing procedures of these two 
different programs. More information about the US-KR CSP program can be 
found on the USPTO's Internet Web site at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.

II. Overview of Pilot Program Structure

    An application must meet all of the requirements set forth in 
section III of this notice to be accepted into this pilot program. An 
applicant must file a Petition to Make Special using form PTO/SB/437KR 
via EFS-web in a U.S. application. Use of the form will assist an 
applicant in complying with the pilot program's requirements. Form PTO/
SB/437KR is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. An 
applicant's use of this form allows the USPTO to quickly identify 
participating applications, facilitates timely processing in accordance 
with this notice, and simplifies petition preparation and submission 
for an applicant. The collection of information involved in this pilot 
program has been submitted to OMB. The collection will be available at 
the OMB's Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
    No fee is required for submission of petitions using Form PTO/SB/
437KR. The fee (currently $140.00) for a petition under 37 CFR 1.102 
(other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte 
waived for petitions to make special based upon the procedure specified 
in this notice.
    Each office may reevaluate the workload and resources needed to 
administer the pilot program at any time. The USPTO will provide notice 
of any substantive changes to the program (including early termination 
of the program) at least thirty (30) days prior to implementation of 
any changes.
    New patent applications are normally taken up for examination in 
the order of their U.S. filing date. Applications accepted into the US-
KR CSP program will receive expedited processing by being granted 
special status and taken out of turn until issuance of a Pre-Interview 
Communication, or first action allowance, but will not maintain special 
status thereafter. While KIPO and USPTO will be sharing search reports, 
the possibility exists that there may be differences in the listing of 
references made of record by the USPTO versus those made of record in 
the corresponding KIPO counterpart application. Participants in the US-
KR CSP program should review the references cited in each respective 
office's search reports. If any KIPO communication to an applicant 
cites references that are not already of record in the USPTO 
application and the applicant wants the examiner to consider the 
references, the applicant should promptly file an Information 
Disclosure Statement (IDS) that includes a copy of the KIPO 
communication along with copies of the newly cited references in 
accordance with 37 CFR 1.98 and MPEP section 609.04(a)-(b). See also 
MPEP sections 609 and 2001.06(a).

III. Requirements for Participation in the Pilot Program

    The following requirements must be satisfied for a petition under 
the US-KR CSP Program to be granted:
    (1) The application must be a non-reissue, non-provisional utility 
application filed under 35 U.S.C. 111(a), or an international 
application that has entered the national stage in compliance with 35 
U.S.C. 371(c), with an effective filing date of no earlier than March 
16, 2013. The U.S. application and the corresponding KIPO counterpart 
application must have a common earliest priority date that is no 
earlier than March 16, 2013.
    (2) A completed petition form PTO/SB/437KR must be filed in the 
application via EFS-Web. Form PTO/SB/437KR is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.
    (3) The petition submission must include an express written consent 
under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art 
references and comments from KIPO, during the examination of the U.S. 
application participating in the pilot program. The petition also must 
provide written authorization for the USPTO to provide KIPO access to 
the participating U.S. application's bibliographic data and search 
reports in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c). Form 
PTO/SB/437KR includes language compliant with the consent requirements 
for this pilot program.
    (4) The petition must be filed at least one day before a first 
Office action on the merits of the application appears in the Patent 
Application Information Retrieval (PAIR) system (i.e., at least one day 
prior to the date when a first Office action on the merits, notice of 
allowability or allowance, or action under Ex parte Quayle, 1935 Dec. 
Comm'r Pat. 11 (1935), appears in the PAIR system). An applicant should 
check the status of the application using the PAIR system prior to 
submitting the petition to ensure that this requirement is met.
    (5) The petition for participation filed in the corresponding KIPO 
counterpart application for the US-KR CSP Program must be grant or have 
granted by KIPO. The KIPO and the USPTO petitions should be filed 
within fifteen days of each other. Both the KIPO and the USPTO 
petitions must be granted for the applications to be treated under the 
US-KR CSP program. As the requirements of each office's pilot program 
may differ, applicants should review the requirements for both pilot 
programs when considering participation, ensuring that the respective 
corresponding counterpart applications can comply with each office's 
requirements.
    (6) The petition submission must include a claims correspondence 
table that notes which claims between the pending U.S. and KIPO 
applications

[[Page 39414]]

have a substantially corresponding scope to each other. Claims are 
considered to have a ``substantially corresponding scope'' where, after 
accounting for differences due to claim format requirements, the scope 
of the corresponding claims in the corresponding KIPO counterpart 
application would either anticipate or render obvious the subject 
matter recited under U.S. law. Additionally, claims in the 
corresponding U.S. counterpart application that introduce a new/
different category of claims than those presented in the corresponding 
KIPO counterpart application are not considered to substantially 
correspond. For example, where the corresponding KIPO counterpart 
application contains only claims relating to a process of manufacturing 
a product, then any product claims in the corresponding U.S. 
counterpart application are not considered to substantially correspond, 
even if the product claims are dependent on process claims which 
substantially correspond to claims in the corresponding KIPO 
counterpart application. Applicants may file a preliminary amendment in 
compliance with 37 CFR 1.121 to amend the claims of the corresponding 
U.S. counterpart application to satisfy this requirement when 
attempting to make the U.S. application eligible for the program.
    (7) The application must contain three or fewer independent claims 
and twenty or fewer total claims. The application must not contain any 
multiple dependent claims. For an application that contains more than 
three independent claims or twenty total claims, or any multiple 
dependent claims, applicants may file a preliminary amendment in 
compliance with 37 CFR 1.121 to cancel the excess claims and/or the 
multiple dependent claims to make the application eligible for the 
program.
    (8) The claims must be directed to a single invention. If the 
Office determines that the claims are directed to multiple inventions 
(e.g., in a restriction requirement), the applicant must make a 
telephonic election without traverse in accordance with the procedures 
outlined in section V of this notice. An applicant is responsible for 
ensuring that the same invention is elected in both the U.S. and KIPO 
corresponding counterpart applications for concurrent treatment in the 
US-KR CSP program.
    (9) All submissions for the participating application while being 
treated under the US-KR CSP program's procedure must be filed via EFS-
Web.
    (10) The petition must include a statement that the applicant 
agrees not to file a request for a refund of the search fee and any 
excess claim fees paid in the application after the mailing or 
notification date of the Pre-Interview Communication. See form PTO/SB/
413C. Any petition for express abandonment under 37 CFR 1.138(d) to 
obtain a refund of the search fee and excess claim fee filed after the 
mailing or notification date of a Pre-Interview Communication will not 
be granted.

IV. Decision on Petition To Make Special Under the US-KR Collaborative 
Search Pilot Program (Form PTO/SB/437KR)

    An applicant must file a Petition to Make Special using Form PTO/
SB/437KR in an eligible U.S. application for entry into the US-KR CSP 
program. Applicant also must file the appropriate petition paper in the 
corresponding KIPO counterpart application for participation in the US-
KR CSP program. Once both petitions are granted, the U.S. application 
will receive expedited processing by being placed on the examiner's 
special docket for examination in accordance with sections V-VIII of 
this notice.

A. Petition Decision Making

    An applicant must file appropriate petition papers in both the 
USPTO and KIPO corresponding counterpart applications within fifteen 
days of each other. If the petitions are not filed within fifteen days 
of each other, an applicant runs the risk of one of the pending 
applications being acted upon by an examiner before entry into the 
pilot program, which will result in both applications being denied 
entry into the pilot program. Both offices must grant the respective 
petitions in order for the applications to participate in the pilot 
program. Once the USPTO issues a decision granting the petition, an 
applicant will no longer have a right to file a preliminary amendment 
that amends the claims. Any preliminary amendment filed after petition 
grant and before issuance of a Pre-Interview Communication amending the 
claims will not be entered unless approved by the examiner. After the 
petition is granted and before issuance of the Pre-Interview 
Communication, an applicant may still submit preliminary amendments to 
the specification that do not affect the claims. If either office 
determines that the petition must be denied, then the other office will 
be informed of the denial determination, and both offices will issue 
decisions denying the petition.

B. Petition Dismissal

    If an applicant files an incomplete Form PTO/SB/437KR, or if an 
application accompanied by Form PTO/SB/437KR does not comply with the 
requirements set forth in this notice, the USPTO will notify the 
applicant of the deficiency by issuing a dismissal decision and the 
applicant will be given a single opportunity to correct the deficiency. 
If an applicant still wishes to participate in the pilot program, the 
applicant must make appropriate corrections within one month or thirty 
days of the mailing date of the dismissal decision, whichever is 
longer. The time period for reply is not extendable under 37 CFR 
1.136(a). If the applicant fails to correct all of the noted 
deficiencies within the time period set forth, the USPTO will render a 
denial decision and notify KIPO in accordance with this notice, and 
neither application will be eligible for the pilot program. The U.S. 
application will then be taken up for examination in accordance with 
standard examination procedures, unless designated special in 
accordance with another established procedure (e.g., Prioritized 
Examination, Special Based on Applicant's Age, etc.). If an applicant 
timely files a response to the dismissal that corrects all the noted 
deficiencies and does not introduce new instances of non-compliance, 
the USPTO will issue a decision granting the petition.

C. Withdrawal of Petition

    An application can be withdrawn from the pilot program only by 
filing a withdrawal of the petition to participate in the pilot program 
prior to issuance of a decision granting the petition. Once the 
petition for participation in the pilot program has been granted (one 
day before it appears in PAIR), withdrawal from the pilot program is 
not permitted. The USPTO will treat any request for withdrawal from the 
pilot program filed after the mailing or notification of acceptance 
into the pilot program as a request to not conduct an interview, and 
subsequent to the mailing of the Pre-Interview Communication, the USPTO 
will issue a First-Action Interview Office Action, in due course. (See 
section VII.B.1. of this notice.)

V. Requirement for Restriction

    If the examiner determines that not all the claims presented are 
directed to a single invention, the telephone restriction practice set 
forth in MPEP section 812.01 will be followed. An applicant must make 
an election without traverse during the telephonic interview. If the 
applicant refuses to

[[Page 39415]]

make an election without traverse, or if the examiner cannot reach the 
applicant after a reasonable effort (i.e., three business days), the 
examiner will treat the first claimed invention (the group of claim 1) 
as constructively elected without traverse for examination. When a 
telephonic election is made, the examiner will provide a complete 
record of the telephone interview, including the restriction or lack of 
unity requirement and the applicant's election, as an attachment to the 
Pre-Interview Communication. Applicants are strongly encouraged to 
ensure that applications submitted for the pilot program are written 
such that they claim a single, independent, and distinct invention. An 
applicant is responsible to ensure the same invention is elected in 
both the U.S. and KIPO corresponding counterpart applications for 
concurrent treatment in this joint office work sharing pilot program.

VI. Pre-Interview Communication

    If the application contains only one invention or an applicant has 
elected one invention without traverse, the examiner will conduct a 
prior art search for the claimed invention under consideration. The 
examiner may prepare either a Notice of Allowability or a Pre-Interview 
Communication.

A. Notice of Allowability

    If the examiner determines that the application is in condition for 
allowance or the application could be placed in condition for allowance 
with minor corrections or a possible amendment or submission, a Pre-
Interview Communication and all subsequent FAI procedures under this 
pilot program will not be necessary. The examiner may allow the 
application, or contact the applicant and conduct an interview in 
accordance with MPEP section 713 to discuss any possible amendments or 
submissions to place the application in condition for allowance. If the 
USPTO has not received the KIPO search report at the time the examiner 
has decided the claims are allowable, the USPTO will notify KIPO of the 
examiner's findings and references identified during the search. The 
USPTO will wait for up to 90 days from the date of notification for 
receipt of the KIPO search. Upon receipt of the KIPO search report, the 
examiner will consider the references cited in the KIPO search report 
before making a final determination whether to issue a Notice of 
Allowability. If the KIPO search report is not received within 90 days, 
the examiner will issue a Notice of Allowability without consideration 
of the KIPO search report. An applicant will be responsible for 
determining the appropriateness of any future correspondence with the 
USPTO for information later obtained from KIPO. If the examiner issues 
a Notice of Allowability with consideration of the KIPO search report, 
the examiner will cite references from the KIPO search report in a 
Notice of References Cited (PTO-892). The Notice of Allowability with a 
completed form PTO-892 also will be forwarded to KIPO for further 
consideration by the KIPO examiner of record for the corresponding KIPO 
counterpart application. If a Notice of Allowability will not issue, 
then the examiner will prepare and issue a Pre-Interview Communication 
in accordance with Section VI.B of this notice.

B. Pre-Interview Communication

    If the examiner determines the application is not in condition for 
allowance, the examiner will prepare a Pre-Interview Communication and 
a PTO-892 citing the prior art references, identifying any rejections 
or objections relevant to the claimed invention, and any designation of 
allowable subject matter. If the USPTO has not received the KIPO search 
report at the time the examiner has completed the Pre-Interview 
Communication, the USPTO will notify KIPO of the examiner's findings 
and references identified during the search. The USPTO will wait for up 
to 90 days from the date of notification for receipt of the KIPO 
search. Upon receipt of the KIPO search report, the examiner will issue 
a Pre-Interview Communication and include a copy of the KIPO search 
report. Thus, the examiner is not required to cite in the Pre-Interview 
Communication references cited in the KIPO search report, because the 
KIPO search report is being sent to the applicant with the Pre-
Interview Communication. If the KIPO search report is not received 
within 90 days, the examiner will issue the Pre-Interview Communication 
to the applicant, and the application will be removed from the pilot 
program for evaluation purposes only, but will continue to be treated 
in accordance with this notice. An applicant is responsible for 
responding to the USPTO Pre-Interview Communication in accordance with 
the First Action Interview Program procedures discussed in Section VII 
of this notice.
    The Pre-Interview Communication issued to an applicant will set 
forth a time period of one month or thirty days, whichever is longer, 
for the applicant to request or decline an interview. An applicant is 
responsible for responding to the Pre-Interview Communication in 
accordance with the First Action Interview Program procedures discussed 
in Section VII of this notice. The USPTO will permit the applicant to 
extend this time period for reply pursuant to 37 CFR 1.136(a) for one 
additional month as set forth in section VII, subsection B (Applicant's 
Options and Reply to Pre-Interview Communication) and subsection C 
(Failure to Respond to Pre-Interview Communication) of this notice. The 
examiner's typical working schedule also will be provided with the Pre-
Interview Communication to indicate the examiner's availability for 
scheduling the interview.

VII. Post Pre-Interview Communication

A. Amendments Filed After Pre-Interview Communication

    Once a Pre-Interview Communication has been entered in an 
application, an applicant no longer has a right to amend the 
application until the first action interview is conducted and the 
First-Action Interview Office Action is sent. Therefore, any amendments 
filed after the Pre-Interview Communication, but before the interview 
and the mailing or notification date of a First-Action Interview Office 
Action (PTOL-413FA), will not be entered unless approved by the 
examiner or in accordance with the procedure of the Full First Action 
Interview Pilot Program in section VII, subsection B(2), or section 
VIII, subsection B(3), of this notice. This is because the examiner has 
devoted a significant amount of time to the preparation of the Pre-
Interview Communication. See 37 CFR 1.115(b) and MPEP section 
714.01(e). The USPTO may enter the amendment if it is clearly limited 
to: Cancellation of claims; adoption of examiner suggestions; placement 
of the application in condition for allowance, including an explanation 
on how the proposed amendments overcome art cited and/or applied in the 
KIPO search report, if necessary, in accordance with U.S. patent laws; 
and/or correction of informalities (similar to the treatment of an 
after-final amendment). Amendments will be entered solely at the 
examiner's discretion.

B. Applicant Options and Reply to Pre-Interview Communication

    Upon receipt of a Pre-Interview Communication, the applicant has 
three options:
    (1) File a ``Request to Not Have a First Action Interview'';
    (2) File a reply under 37 CFR 1.111 waiving the first action 
interview and First-Action Interview Office Action--

[[Page 39416]]

an applicant is accepting that the Pre-Interview Communication is the 
first Office action on the merits; or
    (3) Schedule the first action interview--an applicant must file an 
Applicant Initiated Interview Request Form (PTOL-413A) electronically 
via EFS-Web, accompanied by a proposed amendment or arguments, and 
schedule the interview to be conducted within two months or sixty days, 
whichever is longer, from the filing of the Applicant Initiated 
Interview Request.
1. Request To Not Have a First Action Interview
    If an applicant wishes not to have the first action interview, the 
applicant should electronically file a letter requesting not to have a 
first action interview within the time period set forth in the Pre-
Interview Communication. In this situation, a first action interview 
will not be conducted, and the examiner will provide the First-Action 
Interview Office Action setting forth the requirements, objections, and 
rejections relevant to the claimed invention. However, such a request 
will not preclude the examiner from contacting the applicant and 
conducting a regular interview in accordance with MPEP section 713 to 
discuss any issues or possible amendment to place the application in 
condition for allowance. To ensure that the request will be processed 
and recognized timely, an applicant should file the request 
electronically via EFS-Web, selecting the document description 
``Request to Not Have a First Action Interview'' on the EFS-Web screen.
    Once the petition for entry into the pilot program has been granted 
(one day before it appears in PAIR), withdrawal from the pilot program 
is not permitted. Therefore, the USPTO will treat a request for 
withdrawal from the pilot program filed after the mailing or 
notification of granting an applicant's petition to participate in the 
pilot program as a request to not conduct an interview, issue a Pre-
Interview Communication, and subsequently enter a First-Action 
Interview-Office Action, in due course.
2. File a Reply Under 37 CFR 1.111, Waiving the First Action Interview 
and First-Action Interview Office Action
    Applicants may file, preferably in conjunction with a request to 
not conduct the interview, a reply in compliance with 37 CFR 1.111(b)-
(c) to address every rejection, objection, and requirement set forth in 
the Pre-Interview Communication, including any issues of patentability 
raised by the art cited and/or applied in the KIPO search report, if 
necessary, in accordance with U.S. patent laws, thereby waiving the 
first action interview and First Action Interview Office Action. The 
reply under 37 CFR 1.111 must be filed within the time period for reply 
set forth in the Pre-Interview Communication. To ensure that the 
request will be processed and recognized timely, an applicant should 
file the request electronically via EFS-Web, selecting the document 
description ``Reply under 1.111 to Pre-Interview Communication'' on the 
EFS-Web screen.
    In this situation, a first action interview will not be conducted, 
and a First Action Interview Office Action will not be provided to the 
applicant. The Pre-Interview Communication will be deemed the first 
Office action on the merits. The examiner will consider the reply under 
37 CFR 1.111 and provide an Office action in response to the reply, in 
due course. The Office action will be the second Office action on the 
merits, and thus it could be a final Office action, a notice of 
allowability, or other appropriate action.
3. Schedule the First Action Interview
    If an applicant wants a first action interview with the examiner, 
the applicant must timely file an Applicant Initiated Interview Request 
Form (PTOL 413A), electronically using EFS-Web, accompanied by a 
proposed amendment and/or arguments (as an attachment to the request). 
To ensure that the request will be processed and recognized timely, the 
applicant should select the document description ``First Action 
Interview--Schedule Interview Request.''
    An applicant must designate a proposed date to conduct the 
interview to facilitate scheduling of the first action interview. The 
applicant's proposed date to conduct the interview must be within two 
months or sixty days, whichever is longer, from the filing of the 
Applicant Initiated Interview Request Form. An applicant should consult 
the examiner's work schedule provided in the Pre-Interview 
Communication and discuss with the examiner the best date for 
conducting the interview.
    After filing the Applicant Initiated Interview Request Form, the 
applicant must contact the examiner to confirm the interview date. The 
applicant's failure to conduct an interview within two months or sixty 
days, whichever is longer, from the filing of Applicant Initiated 
Interview Request Form will be treated as a failure to respond to the 
Pre-Interview Communication. See section VII; subsection C (Failure to 
Respond to Pre-Interview Communication) of this notice. The interview 
may be in person, telephonic, or a video-conference. The applicant must 
provide written authorization to conduct any Internet email 
communications with the examiner. See MPEP section 502.03 for more 
information.
    The proposed amendment or arguments must be clearly labeled as 
``PROPOSED'' at the header or footer of each page and filed 
electronically via EFS-Web as an attachment to the Applicant Initiated 
Interview Request Form. The proposed amendment or arguments will not be 
entered as a matter of right. The proposed amendment or arguments must 
address every proposed rejection, objection, and requirement set forth 
in the Pre-Interview Communication, including any issues of 
patentability raised by the art cited and/or applied in the KIPO search 
report, if necessary, in accordance with U.S. patent laws. The 
examiner, based upon discussions, feedback, and agreement with an 
applicant during the interview may at his or her discretion enter the 
amendment if found sufficient to advance prosecution on the merits. See 
MPEP sections 713.01 III and 713.04; see also MPEP sections 714 and 
1302.04. Even if the examiner denies entry of the proposed amendment, 
the proposed amendment will be placed in the application file.
    Preparation for the Interview: An applicant must be prepared to 
fully discuss the prior art of record, any relevant interview talking 
points from the interview talking points posted at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_talking_points.pdf, and any rejections or objections with the 
intent to clarify and resolve all issues with respect to patentability 
during the interview, including any issues of patentability raised by 
the art cited and/or applied in the KIPO search report, if necessary, 
in accordance with U.S. patent laws. An applicant also must be prepared 
to discuss any proposed amendment or arguments previously submitted and 
discuss and resolve any relevant issues that arise. The interview 
talking points posted at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_talking_points.pdf represent a non-exhaustive list 
of potential topics for discussion in a first action interview. The 
talking points are available to the public and the patent examining 
corps to assist and facilitate comprehensive and effective first action 
interviews.
    Multiple proposed amendments or sets of arguments are not 
permitted.

[[Page 39417]]

    Inventor Participation: Inventor participation in the interview 
process is encouraged, as it may assist in the resolution of 
outstanding rejections and/or objections.

C. Failure To Respond to Pre-Interview Communication

    If an applicant fails to: (1) Respond to the Pre-Interview 
Communication within the time period for reply or (2) conduct the 
interview within two months or sixty days, whichever is longer, from 
the filing of the Applicant Initiated Interview Request Form, the 
Office will enter a First-Action Interview Office Action. Therefore, 
the consequence for failure to respond to the Pre-Interview 
Communication is issuance of a First-Action Interview Office Action 
without the benefit of an interview.

VIII. First-Action Interview and First-Action Interview Office Action

A. First-Action Interview

    The interview will be conducted in accordance with the procedure 
provided in MPEP section 713 except as otherwise provided in this 
notice. The interview should focus on and include:
    1. A discussion to assist the examiner in developing a better 
understanding of the invention;
    2. A discussion to establish the state of the art as of the 
effective filing date of the claimed invention, including the prior art 
references cited by the applicant and the examiner (as only 
applications subject to the First Inventor to File provisions of the 
Leahy-Smith America Invents Act (AIA) are eligible for this pilot 
program); and
    3. A discussion of the features of the claimed subject matter which 
make the invention patentable, including any proposed amendments to the 
claims.
    4. A discussion regarding any issues of patentability raised by the 
art cited and/or applied in the KIPO search report, if necessary, in 
accordance with U.S. patent laws.

B. Three Possible Outcomes of a First-Action Interview

    1. An agreement is reached and all claims are in condition for 
allowance. If the applicant and the examiner reach agreement that the 
application is in condition for allowance, the examiner must complete 
an Interview Summary (PTOL-413), enter and attach any necessary 
amendments or arguments (e.g., the proposed amendment and/or an 
examiner's amendment), generate a notice of allowability (PTOL-37), and 
attach a copy of the completed Applicant Initiated Interview Request 
Form. If the examiner agrees to enter the proposed amendment, the 
examiner must annotate the first page of the proposed amendment (e.g., 
``OK to enter''). In an in-person interview, a courtesy copy of the 
completed forms will be given to the applicant at the conclusion of the 
interview. The completed forms will then be promptly made of record 
with a Notice of Allowability and a Notice of Allowance and Fees Due 
(PTOL 85). The Notice of Allowability and the Notice of Allowance, 
interview summary, and all amendments made of record along with a 
completed Notice of References Cited form PTO-892 listing any newly 
cited references will also be forwarded to KIPO for consideration by 
the KIPO examiner of record for the corresponding KIPO counterpart 
application.
    2. An agreement as to allowability is not reached. If the applicant 
and the examiner do not reach agreement during the interview, the 
examiner will set forth any unresolved, maintained, or new 
requirements, objections, and rejections in the First-Action Interview 
Office Action. The examiner also will complete an Interview Summary, 
highlighting the basis for any unresolved, maintained, or new 
requirements, objections, and rejections as well as resolution of any 
issues that occurred during the interview, attaching a copy of the 
completed Applicant Initiated Interview Request Form and any proposed 
amendments or arguments. In a personal interview, a courtesy copy of 
the completed forms may be given to the applicant at the conclusion of 
the interview. The completed forms will be promptly made of record.
    For this situation, the First-Action Interview Office Action is 
deemed the first Office action on the merits. Because the requirements, 
objections, and grounds of rejection are provided in the Pre-Interview 
Communication and the First-Action Interview Office Action, the 
applicant has sufficient notice of the requirements, objections, and 
grounds of rejection. To avoid abandonment of the application, the 
applicant must, within two months or sixty days, whichever is longer, 
from the mailing or notification date of the First-Action Interview 
Office Action, file a reply in compliance with 37 CFR 1.111(b)-(c). 
This time period for reply is extendable under 37 CFR 1.136(a) for only 
two additional months. The First-Action Interview Office Action, 
interview summary and a completed Notice of References Cited form PTO-
892 listing any newly cited references also will be forwarded to KIPO 
for consideration by the KIPO examiner of record for the corresponding 
KIPO counterpart application.
    3. An agreement as to allowability is not reached, and applicant 
wishes to convert the previously submitted proposed amendment into a 
reply under 37 CFR 1.111(b) and waive receipt of a First-Action 
Interview Office Action. Applicants may request the USPTO to enter the 
previously filed proposed amendment and/or arguments as a reply under 
37 CFR 1.111 to address every rejection, objection, and requirement set 
forth in the Pre-Interview Communication, waiving a First-Action 
Interview Office Action, if the proposed amendment and/or arguments 
comply with the requirements of 37 CFR 1.121 and 37 CFR 1.111(b)-(c). 
If the examiner agrees to enter the proposed amendment as the reply 
under 37 CFR 1.111 to the Pre-Interview Communication, the examiner 
must annotate the first page of the proposed amendment (e.g., ``OK to 
enter''), and provide a statement in the Interview Summary (e.g., 
``Applicant requested to enter the proposed amendment as a reply under 
37 CFR 1.111 to the Pre-Interview Communication, waiving the First-
Action Interview Office Action''). The applicant cannot file any 
additional amendment and/or arguments until the mailing or notification 
of the next Office action.
    In this situation, a First-Action Interview Office Action will not 
be provided to the applicant. The Pre-Interview Communication and the 
interview will be deemed the first Office action on the merits. The 
interview summary and a completed Notice of References Cited form PTO-
892 listing any newly cited references, if any, also will be forwarded 
to KIPO for consideration by the KIPO examiner of record for the 
corresponding KIPO counterpart application. The examiner will enter the 
proposed amendment and/or arguments, consider it as the reply under 37 
CFR 1.111, and provide an Office action in response to the reply. The 
Office action will be the second Office action on the merits, and thus 
it could be a final Office action, a notice of allowability, or other 
appropriate action.

C. Substance of Interview Must Be Made of Record

    A complete written statement as to the substance of the interview 
with regard to the merits of the application must be made of record in 
the application, whether or not an agreement with the examiner was 
reached at the interview. It is the applicant's responsibility to make 
of

[[Page 39418]]

record the substance of an interview, and it is the examiner's 
responsibility to see that such a record is made and to correct 
inaccuracies, including those which bear directly on the question of 
patentability. See MPEP section 713.04.

    Dated: July 2, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-16850 Filed 7-8-15; 8:45 am]
 BILLING CODE 3510-16-P



                                                39412                           Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices

                                                   Permit No. 17278 authorizes Dr. Shine                 the examination of patent applications                independently performed concurrent
                                                to import and receive parts from                         in both offices. In the pilot program,                searches, increases the efficiency and
                                                subsistence-collected long-finned pilot                  each office will concurrently conduct a               quality of patent examination. This
                                                whales (Globicephala melas) archived at                  prior art search for its corresponding                exchange of search reports would occur
                                                the Faroese Museum of Natural History,                   counterpart application. The search                   prior to making determinations
                                                Faroe Islands. The permit, as amended,                   report from each office will then be                  regarding patentability. Work sharing
                                                increases the number of samples                          exchanged between offices before either               benefits applicants by promoting
                                                authorized to be imported from 15 to                     office issues a communication                         compact prosecution, reducing
                                                100 animals annually, as well as                         concerning patentability to the                       pendency, and supporting patent
                                                authorization to conduct analyses of                     applicant. As a result of this exchange               quality by reducing the likelihood of
                                                chlorinated and fluorinated organic                      of search reports, the examiners in both              inconsistencies in patentability
                                                chemicals using the same samples.                        offices may have a more comprehensive                 determinations (not predicated upon
                                                   Permit No. 17557 authorizes the                       set of references before them when                    differences in national patent laws)
                                                NMFS Forensics Office to receive,                        making an initial patentability                       between IP offices when considering
                                                import, export, transfer, archive, and                   determination. Each office will accord                corresponding counterpart applications.
                                                conduct analyses on marine mammal                        special status to its counterpart                        Currently, an application filed in the
                                                and ESA-listed species parts under                       application to first action. First Action             USPTO with a claim of foreign priority
                                                NMFS jurisdiction. The permit has been                   Interview (FAI) pilot program                         may have a search report and art cited
                                                amended to include scalloped                             procedures will be applied during the                 by the foreign office in the priority
                                                hammerhead sharks (Sphyrna lewinia)                      examination of the U.S. application and               application provided to applicant
                                                recently listed under the ESA.                           make the Korean search report of record               during the U.S. application’s pendency.
                                                   In compliance with the National                       concurrently with the issuance of a Pre-              After review of the search report and
                                                Environmental Policy Act of 1969 (42                     Interview Communication.                              cited art, an applicant may submit an
                                                U.S.C. 4321 et seq.), a final                            DATES: Effective Date: September 1,                   Information Disclosure Statement (IDS)
                                                determination has been made that the                     2015.                                                 in the U.S. application to provide the
                                                activity proposed is categorically                         Duration: Under the United States-                  information to the USPTO. Often this
                                                excluded from the requirement to                         Korean Collaboration Pilot (US–KR CSP)                submission occurs after examination on
                                                prepare an environmental assessment or                   program, the USPTO and KIPO will                      the merits is already underway in the
                                                environmental impact statement.                          accept petitions to participate for two               U.S. application. Upon evaluation of the
                                                   As required by the ESA, issuance of                   years from its effective date. During the             search report and cited art, the U.S.
                                                the permit amendment (Permit No.                         pilot program, each office will be                    examiner may determine that the art
                                                17557–01) was based on a finding that                    limited to granting 400 petitions. The                cited by the foreign office is relevant to
                                                such permit: (1) Was applied for in good                 offices may extend the pilot program                  patentability and merits further
                                                faith; (2) will not operate to the                       (with or without modification) for an                 examination before making a final
                                                disadvantage of such endangered                          additional amount of time, if necessary.              determination on patentability. The
                                                species; and (3) is consistent with the                  Both offices reserve the right to                     delay caused by further examination
                                                purposes and policies set forth in                       terminate the pilot program at any time.              results in additional costs to an
                                                section 2 of the ESA.                                                                                          applicant and the USPTO that could
                                                                                                         FOR FURTHER INFORMATION CONTACT:
                                                  Dated: June 26, 2015.
                                                                                                                                                               have been avoided if the U.S. examiner
                                                                                                         Daniel Hunter, Director of International
                                                                                                                                                               was in possession of the foreign office’s
                                                Julia Harrison,                                          Work Sharing, Planning, and                           search results before commencing
                                                Chief, Permits and Conservation Division,                Implementation, Office of International               examination of the application.
                                                Office of Protected Resources, National                  Patent Cooperation, by telephone at                   Furthermore, in light of the various
                                                Marine Fisheries Service.                                571–272–8050 regarding the handling of                expedited examination programs
                                                [FR Doc. 2015–16781 Filed 7–8–15; 8:45 am]               any specific application participating in             currently in place, the potential exists
                                                BILLING CODE 3510–22–P                                   the pilot. Any questions concerning this              that a U.S. application may reach final
                                                                                                         notice may be directed to Joseph Weiss,               disposition before an applicant is in
                                                                                                         Senior Legal Advisor, Office of Patent                receipt of a foreign office’s search
                                                DEPARTMENT OF COMMERCE                                   Legal Administration, by phone (571)                  report. Work sharing between
                                                                                                         272–7759. Any inquiries regarding this                intellectual Property (IP) offices in the
                                                Patent and Trademark Office                              pilot program can be emailed to csp@                  form of an exchange of search reports
                                                [Docket No.: PTO–P–2015–0026]                            uspto.gov.                                            may increase efficiency and promote
                                                                                                         SUPPLEMENTARY INFORMATION:                            patent examination quality by providing
                                                United States Patent and Trademark
                                                                                                                                                               the examiner with both offices’ search
                                                Office and Korean Intellectual Property                  I. Background
                                                                                                                                                               reports when examination commences.
                                                Office Collaborative Search Pilot                           The USPTO is continually looking for               In order to study the benefits of the
                                                Program                                                  ways to improve the quality of issued                 exchange of search reports between
                                                AGENCY: United States Patent and                         patents and to promote work sharing                   offices, current USPTO examination
                                                Trademark Office, Commerce.                              between other Intellectual Property (IP)              practice would need to be modified to
                                                ACTION: Notice.                                          Offices throughout the world. The                     conduct a search and generate a search
                                                                                                         USPTO has launched several work                       report, without issuance of an Office
                                                SUMMARY:  The United States Patent and                   sharing pilot programs in recent years
srobinson on DSK5SPTVN1PROD with NOTICES




                                                                                                                                                               action. The U.S. application also would
                                                Trademark Office (USPTO) is initiating                   (e.g., numerous Patent Prosecution                    need to be ‘‘made special’’ pursuant to
                                                a joint Work Sharing Pilot Program with                  Highway Pilot Programs). In furtherance               USPTO procedures to ensure that it
                                                the Korean Intellectual Patent Office                    of promoting interoffice work sharing,                could be contemporaneously searched
                                                (KIPO) to study whether the exchange of                  the USPTO and KIPO will cooperate in                  with its corresponding counterpart
                                                search reports between offices for                       a study to determine whether work                     application.
                                                corresponding counterpart applications                   sharing between IP offices, in the form                  The USPTO is using the First Action
                                                improves patent quality and facilitates                  of exchanging the results from                        Interview Pilot Program (FAI) in this


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                                                                                Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices                                            39413

                                                search report work sharing pilot                         USPTO to quickly identify participating               or an international application that has
                                                program because its procedure                            applications, facilitates timely                      entered the national stage in compliance
                                                bifurcates the determination and                         processing in accordance with this                    with 35 U.S.C. 371(c), with an effective
                                                evaluation of a prior art search from the                notice, and simplifies petition                       filing date of no earlier than March 16,
                                                notice of rejection. See Full First Action               preparation and submission for an                     2013. The U.S. application and the
                                                Interview Pilot Program, 1367 Off. Gaz.                  applicant. The collection of information              corresponding KIPO counterpart
                                                Pat. Office 42 (June 7, 2011). Under the                 involved in this pilot program has been               application must have a common
                                                FAI pilot program, participants receive                  submitted to OMB. The collection will                 earliest priority date that is no earlier
                                                a Pre-Interview Communication                            be available at the OMB’s Information                 than March 16, 2013.
                                                providing the results of a prior art                     Collection Review Web site                               (2) A completed petition form PTO/
                                                search conducted by the examiner.                        (www.reginfo.gov/public/do/PRAMain).                  SB/437KR must be filed in the
                                                Participants then have three options: (1)                   No fee is required for submission of               application via EFS-Web. Form PTO/
                                                File a request not to conduct a first                    petitions using Form PTO/SB/437KR.                    SB/437KR is available at: http://
                                                action interview; (2) submit a reply                     The fee (currently $140.00) for a petition            www.uspto.gov/patents-getting-started/
                                                under 37 CFR 1.111 after reviewing the                   under 37 CFR 1.102 (other than those                  international-protection/collaborative-
                                                Pre-Interview Communication; or (3)                      enumerated in 37 CFR 1.102(c)) is                     search-pilot-program-csp.
                                                conduct an interview with the                            hereby sua sponte waived for petitions                   (3) The petition submission must
                                                examiner. Participants in the FAI pilot                  to make special based upon the                        include an express written consent
                                                program experience many benefits                         procedure specified in this notice.                   under 35 U.S.C. 122(c) for the USPTO
                                                including: (1) The ability to advance                       Each office may reevaluate the                     to accept and consider prior art
                                                prosecution of an application; (2)                       workload and resources needed to                      references and comments from KIPO,
                                                enhanced interaction between applicant                   administer the pilot program at any                   during the examination of the U.S.
                                                and the examiner; (3) the opportunity to                 time. The USPTO will provide notice of                application participating in the pilot
                                                resolve patentability issues one-on-one                  any substantive changes to the program                program. The petition also must provide
                                                with the examiner at the beginning of                    (including early termination of the                   written authorization for the USPTO to
                                                the prosecution process; and (4) the                     program) at least thirty (30) days prior              provide KIPO access to the participating
                                                opportunity to facilitate possible early                 to implementation of any changes.                     U.S. application’s bibliographic data
                                                allowance.                                                  New patent applications are normally               and search reports in accordance with
                                                   The US–KR CSP program differs from                    taken up for examination in the order of              35 U.S.C. 122(a) and 37 CFR 1.14(c).
                                                the FAI pilot program procedure by                       their U.S. filing date. Applications                  Form PTO/SB/437KR includes language
                                                requiring a Petition to Make Special for                 accepted into the US–KR CSP program                   compliant with the consent
                                                the participating application, and                       will receive expedited processing by                  requirements for this pilot program.
                                                providing for the exchange of                            being granted special status and taken                   (4) The petition must be filed at least
                                                information with KIPO at different                       out of turn until issuance of a Pre-                  one day before a first Office action on
                                                stages of prosecution as set forth in this               Interview Communication, or first                     the merits of the application appears in
                                                notice.                                                  action allowance, but will not maintain               the Patent Application Information
                                                   The USPTO also is initiating a joint                  special status thereafter. While KIPO                 Retrieval (PAIR) system (i.e., at least one
                                                Work Sharing Pilot Program with the                      and USPTO will be sharing search                      day prior to the date when a first Office
                                                Japan Patent Office (JPO). The KIPO and                  reports, the possibility exists that there            action on the merits, notice of
                                                JPO pilot programs are different in the                  may be differences in the listing of                  allowability or allowance, or action
                                                way that they operate. Thus, while there                 references made of record by the USPTO                under Ex parte Quayle, 1935 Dec.
                                                may be applications that are eligible for                versus those made of record in the                    Comm’r Pat. 11 (1935), appears in the
                                                both work sharing pilot programs, such                   corresponding KIPO counterpart                        PAIR system). An applicant should
                                                applications will not be permitted to                    application. Participants in the US–KR                check the status of the application using
                                                participate in both pilot programs due to                CSP program should review the                         the PAIR system prior to submitting the
                                                the differences in work sharing                          references cited in each respective                   petition to ensure that this requirement
                                                procedures of these two different                        office’s search reports. If any KIPO                  is met.
                                                programs. More information about the                     communication to an applicant cites                      (5) The petition for participation filed
                                                US–KR CSP program can be found on                        references that are not already of record             in the corresponding KIPO counterpart
                                                the USPTO’s Internet Web site at:                        in the USPTO application and the                      application for the US–KR CSP Program
                                                http://www.uspto.gov/patents-getting-                    applicant wants the examiner to                       must be grant or have granted by KIPO.
                                                started/international-protection/                        consider the references, the applicant                The KIPO and the USPTO petitions
                                                collaborative-search-pilot-program-csp.                  should promptly file an Information                   should be filed within fifteen days of
                                                                                                         Disclosure Statement (IDS) that includes              each other. Both the KIPO and the
                                                II. Overview of Pilot Program Structure                                                                        USPTO petitions must be granted for the
                                                                                                         a copy of the KIPO communication
                                                   An application must meet all of the                   along with copies of the newly cited                  applications to be treated under the US–
                                                requirements set forth in section III of                 references in accordance with 37 CFR                  KR CSP program. As the requirements of
                                                this notice to be accepted into this pilot               1.98 and MPEP section 609.04(a)–(b).                  each office’s pilot program may differ,
                                                program. An applicant must file a                        See also MPEP sections 609 and                        applicants should review the
                                                Petition to Make Special using form                      2001.06(a).                                           requirements for both pilot programs
                                                PTO/SB/437KR via EFS-web in a U.S.                                                                             when considering participation,
                                                application. Use of the form will assist                 III. Requirements for Participation in                ensuring that the respective
srobinson on DSK5SPTVN1PROD with NOTICES




                                                an applicant in complying with the pilot                 the Pilot Program                                     corresponding counterpart applications
                                                program’s requirements. Form PTO/SB/                        The following requirements must be                 can comply with each office’s
                                                437KR is available at: http://                           satisfied for a petition under the US–KR              requirements.
                                                www.uspto.gov/patents-getting-started/                   CSP Program to be granted:                               (6) The petition submission must
                                                international-protection/collaborative-                     (1) The application must be a non-                 include a claims correspondence table
                                                search-pilot-program-csp. An                             reissue, non-provisional utility                      that notes which claims between the
                                                applicant’s use of this form allows the                  application filed under 35 U.S.C. 111(a),             pending U.S. and KIPO applications


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                                                39414                           Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices

                                                have a substantially corresponding                       to file a request for a refund of the                 B. Petition Dismissal
                                                scope to each other. Claims are                          search fee and any excess claim fees                     If an applicant files an incomplete
                                                considered to have a ‘‘substantially                     paid in the application after the mailing             Form PTO/SB/437KR, or if an
                                                corresponding scope’’ where, after                       or notification date of the Pre-Interview             application accompanied by Form PTO/
                                                accounting for differences due to claim                  Communication. See form PTO/SB/                       SB/437KR does not comply with the
                                                format requirements, the scope of the                    413C. Any petition for express                        requirements set forth in this notice, the
                                                corresponding claims in the                              abandonment under 37 CFR 1.138(d) to                  USPTO will notify the applicant of the
                                                corresponding KIPO counterpart                           obtain a refund of the search fee and                 deficiency by issuing a dismissal
                                                application would either anticipate or                   excess claim fee filed after the mailing              decision and the applicant will be given
                                                render obvious the subject matter                        or notification date of a Pre-Interview               a single opportunity to correct the
                                                recited under U.S. law. Additionally,                    Communication will not be granted.                    deficiency. If an applicant still wishes to
                                                claims in the corresponding U.S.
                                                                                                                                                               participate in the pilot program, the
                                                counterpart application that introduce a                 IV. Decision on Petition To Make
                                                                                                                                                               applicant must make appropriate
                                                new/different category of claims than                    Special Under the US–KR Collaborative
                                                                                                                                                               corrections within one month or thirty
                                                those presented in the corresponding                     Search Pilot Program (Form PTO/SB/
                                                                                                                                                               days of the mailing date of the dismissal
                                                KIPO counterpart application are not                     437KR)
                                                considered to substantially correspond.                                                                        decision, whichever is longer. The time
                                                For example, where the corresponding                       An applicant must file a Petition to                period for reply is not extendable under
                                                KIPO counterpart application contains                    Make Special using Form PTO/SB/                       37 CFR 1.136(a). If the applicant fails to
                                                only claims relating to a process of                     437KR in an eligible U.S. application for             correct all of the noted deficiencies
                                                manufacturing a product, then any                        entry into the US–KR CSP program.                     within the time period set forth, the
                                                product claims in the corresponding                      Applicant also must file the appropriate              USPTO will render a denial decision
                                                U.S. counterpart application are not                     petition paper in the corresponding                   and notify KIPO in accordance with this
                                                considered to substantially correspond,                                                                        notice, and neither application will be
                                                                                                         KIPO counterpart application for
                                                even if the product claims are                                                                                 eligible for the pilot program. The U.S.
                                                                                                         participation in the US–KR CSP
                                                dependent on process claims which                                                                              application will then be taken up for
                                                                                                         program. Once both petitions are
                                                substantially correspond to claims in                                                                          examination in accordance with
                                                                                                         granted, the U.S. application will                    standard examination procedures,
                                                the corresponding KIPO counterpart                       receive expedited processing by being
                                                application. Applicants may file a                                                                             unless designated special in accordance
                                                                                                         placed on the examiner’s special docket               with another established procedure
                                                preliminary amendment in compliance                      for examination in accordance with
                                                with 37 CFR 1.121 to amend the claims                                                                          (e.g., Prioritized Examination, Special
                                                                                                         sections V–VIII of this notice.                       Based on Applicant’s Age, etc.). If an
                                                of the corresponding U.S. counterpart
                                                application to satisfy this requirement                  A. Petition Decision Making                           applicant timely files a response to the
                                                when attempting to make the U.S.                                                                               dismissal that corrects all the noted
                                                application eligible for the program.                       An applicant must file appropriate                 deficiencies and does not introduce new
                                                   (7) The application must contain three                petition papers in both the USPTO and                 instances of non-compliance, the
                                                or fewer independent claims and twenty                   KIPO corresponding counterpart                        USPTO will issue a decision granting
                                                or fewer total claims. The application                   applications within fifteen days of each              the petition.
                                                must not contain any multiple                            other. If the petitions are not filed                 C. Withdrawal of Petition
                                                dependent claims. For an application                     within fifteen days of each other, an
                                                that contains more than three                            applicant runs the risk of one of the                    An application can be withdrawn
                                                independent claims or twenty total                       pending applications being acted upon                 from the pilot program only by filing a
                                                claims, or any multiple dependent                        by an examiner before entry into the                  withdrawal of the petition to participate
                                                claims, applicants may file a                            pilot program, which will result in both              in the pilot program prior to issuance of
                                                preliminary amendment in compliance                      applications being denied entry into the              a decision granting the petition. Once
                                                with 37 CFR 1.121 to cancel the excess                   pilot program. Both offices must grant                the petition for participation in the pilot
                                                claims and/or the multiple dependent                     the respective petitions in order for the             program has been granted (one day
                                                claims to make the application eligible                                                                        before it appears in PAIR), withdrawal
                                                                                                         applications to participate in the pilot
                                                for the program.                                                                                               from the pilot program is not permitted.
                                                                                                         program. Once the USPTO issues a
                                                   (8) The claims must be directed to a                                                                        The USPTO will treat any request for
                                                                                                         decision granting the petition, an
                                                single invention. If the Office                                                                                withdrawal from the pilot program filed
                                                                                                         applicant will no longer have a right to              after the mailing or notification of
                                                determines that the claims are directed
                                                                                                         file a preliminary amendment that                     acceptance into the pilot program as a
                                                to multiple inventions (e.g., in a
                                                                                                         amends the claims. Any preliminary                    request to not conduct an interview, and
                                                restriction requirement), the applicant
                                                must make a telephonic election                          amendment filed after petition grant and              subsequent to the mailing of the Pre-
                                                without traverse in accordance with the                  before issuance of a Pre-Interview                    Interview Communication, the USPTO
                                                procedures outlined in section V of this                 Communication amending the claims                     will issue a First-Action Interview
                                                notice. An applicant is responsible for                  will not be entered unless approved by                Office Action, in due course. (See
                                                ensuring that the same invention is                      the examiner. After the petition is                   section VII.B.1. of this notice.)
                                                elected in both the U.S. and KIPO                        granted and before issuance of the Pre-
                                                                                                         Interview Communication, an applicant                 V. Requirement for Restriction
                                                corresponding counterpart applications
                                                                                                         may still submit preliminary                            If the examiner determines that not all
srobinson on DSK5SPTVN1PROD with NOTICES




                                                for concurrent treatment in the US–KR
                                                CSP program.                                             amendments to the specification that do               the claims presented are directed to a
                                                   (9) All submissions for the                           not affect the claims. If either office               single invention, the telephone
                                                participating application while being                    determines that the petition must be                  restriction practice set forth in MPEP
                                                treated under the US–KR CSP program’s                    denied, then the other office will be                 section 812.01 will be followed. An
                                                procedure must be filed via EFS-Web.                     informed of the denial determination,                 applicant must make an election
                                                   (10) The petition must include a                      and both offices will issue decisions                 without traverse during the telephonic
                                                statement that the applicant agrees not                  denying the petition.                                 interview. If the applicant refuses to


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                                                                                Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices                                           39415

                                                make an election without traverse, or if                 the KIPO search report. An applicant                  to the Pre-Interview Communication in
                                                the examiner cannot reach the applicant                  will be responsible for determining the               accordance with the First Action
                                                after a reasonable effort (i.e., three                   appropriateness of any future                         Interview Program procedures discussed
                                                business days), the examiner will treat                  correspondence with the USPTO for                     in Section VII of this notice. The USPTO
                                                the first claimed invention (the group of                information later obtained from KIPO. If              will permit the applicant to extend this
                                                claim 1) as constructively elected                       the examiner issues a Notice of                       time period for reply pursuant to 37
                                                without traverse for examination. When                   Allowability with consideration of the                CFR 1.136(a) for one additional month
                                                a telephonic election is made, the                       KIPO search report, the examiner will                 as set forth in section VII, subsection B
                                                examiner will provide a complete                         cite references from the KIPO search                  (Applicant’s Options and Reply to Pre-
                                                record of the telephone interview,                       report in a Notice of References Cited                Interview Communication) and
                                                including the restriction or lack of unity               (PTO–892). The Notice of Allowability                 subsection C (Failure to Respond to Pre-
                                                requirement and the applicant’s                          with a completed form PTO–892 also                    Interview Communication) of this
                                                election, as an attachment to the Pre-                   will be forwarded to KIPO for further                 notice. The examiner’s typical working
                                                Interview Communication. Applicants                      consideration by the KIPO examiner of                 schedule also will be provided with the
                                                are strongly encouraged to ensure that                   record for the corresponding KIPO                     Pre-Interview Communication to
                                                applications submitted for the pilot                     counterpart application. If a Notice of               indicate the examiner’s availability for
                                                program are written such that they                       Allowability will not issue, then the                 scheduling the interview.
                                                claim a single, independent, and                         examiner will prepare and issue a Pre-
                                                distinct invention. An applicant is                      Interview Communication in                            VII. Post Pre-Interview Communication
                                                responsible to ensure the same                           accordance with Section VI.B of this                  A. Amendments Filed After Pre-
                                                invention is elected in both the U.S. and                notice.                                               Interview Communication
                                                KIPO corresponding counterpart
                                                                                                         B. Pre-Interview Communication                           Once a Pre-Interview Communication
                                                applications for concurrent treatment in
                                                this joint office work sharing pilot                        If the examiner determines the                     has been entered in an application, an
                                                program.                                                 application is not in condition for                   applicant no longer has a right to amend
                                                                                                         allowance, the examiner will prepare a                the application until the first action
                                                VI. Pre-Interview Communication                          Pre-Interview Communication and a                     interview is conducted and the First-
                                                  If the application contains only one                   PTO–892 citing the prior art references,              Action Interview Office Action is sent.
                                                invention or an applicant has elected                    identifying any rejections or objections              Therefore, any amendments filed after
                                                one invention without traverse, the                      relevant to the claimed invention, and                the Pre-Interview Communication, but
                                                examiner will conduct a prior art search                 any designation of allowable subject                  before the interview and the mailing or
                                                for the claimed invention under                          matter. If the USPTO has not received                 notification date of a First-Action
                                                consideration. The examiner may                          the KIPO search report at the time the                Interview Office Action (PTOL–413FA),
                                                prepare either a Notice of Allowability                  examiner has completed the Pre-                       will not be entered unless approved by
                                                or a Pre-Interview Communication.                        Interview Communication, the USPTO                    the examiner or in accordance with the
                                                                                                         will notify KIPO of the examiner’s                    procedure of the Full First Action
                                                A. Notice of Allowability                                                                                      Interview Pilot Program in section VII,
                                                                                                         findings and references identified
                                                   If the examiner determines that the                   during the search. The USPTO will wait                subsection B(2), or section VIII,
                                                application is in condition for                          for up to 90 days from the date of                    subsection B(3), of this notice. This is
                                                allowance or the application could be                    notification for receipt of the KIPO                  because the examiner has devoted a
                                                placed in condition for allowance with                   search. Upon receipt of the KIPO search               significant amount of time to the
                                                minor corrections or a possible                          report, the examiner will issue a Pre-                preparation of the Pre-Interview
                                                amendment or submission, a Pre-                          Interview Communication and include a                 Communication. See 37 CFR 1.115(b)
                                                Interview Communication and all                          copy of the KIPO search report. Thus,                 and MPEP section 714.01(e). The
                                                subsequent FAI procedures under this                     the examiner is not required to cite in               USPTO may enter the amendment if it
                                                pilot program will not be necessary. The                 the Pre-Interview Communication                       is clearly limited to: Cancellation of
                                                examiner may allow the application, or                   references cited in the KIPO search                   claims; adoption of examiner
                                                contact the applicant and conduct an                     report, because the KIPO search report                suggestions; placement of the
                                                interview in accordance with MPEP                        is being sent to the applicant with the               application in condition for allowance,
                                                section 713 to discuss any possible                      Pre-Interview Communication. If the                   including an explanation on how the
                                                amendments or submissions to place the                   KIPO search report is not received                    proposed amendments overcome art
                                                application in condition for allowance.                  within 90 days, the examiner will issue               cited and/or applied in the KIPO search
                                                If the USPTO has not received the KIPO                   the Pre-Interview Communication to the                report, if necessary, in accordance with
                                                search report at the time the examiner                   applicant, and the application will be                U.S. patent laws; and/or correction of
                                                has decided the claims are allowable,                    removed from the pilot program for                    informalities (similar to the treatment of
                                                the USPTO will notify KIPO of the                        evaluation purposes only, but will                    an after-final amendment). Amendments
                                                examiner’s findings and references                       continue to be treated in accordance                  will be entered solely at the examiner’s
                                                identified during the search. The                        with this notice. An applicant is                     discretion.
                                                USPTO will wait for up to 90 days from                   responsible for responding to the
                                                the date of notification for receipt of the              USPTO Pre-Interview Communication                     B. Applicant Options and Reply to Pre-
                                                KIPO search. Upon receipt of the KIPO                    in accordance with the First Action                   Interview Communication
                                                search report, the examiner will                         Interview Program procedures discussed                  Upon receipt of a Pre-Interview
srobinson on DSK5SPTVN1PROD with NOTICES




                                                consider the references cited in the                     in Section VII of this notice.                        Communication, the applicant has three
                                                KIPO search report before making a final                    The Pre-Interview Communication                    options:
                                                determination whether to issue a Notice                  issued to an applicant will set forth a                 (1) File a ‘‘Request to Not Have a First
                                                of Allowability. If the KIPO search                      time period of one month or thirty days,              Action Interview’’;
                                                report is not received within 90 days,                   whichever is longer, for the applicant to               (2) File a reply under 37 CFR 1.111
                                                the examiner will issue a Notice of                      request or decline an interview. An                   waiving the first action interview and
                                                Allowability without consideration of                    applicant is responsible for responding               First-Action Interview Office Action—


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                                                39416                           Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices

                                                an applicant is accepting that the Pre-                  search report, if necessary, in                       Respond to Pre-Interview
                                                Interview Communication is the first                     accordance with U.S. patent laws,                     Communication) of this notice. The
                                                Office action on the merits; or                          thereby waiving the first action                      interview may be in person, telephonic,
                                                  (3) Schedule the first action                          interview and First Action Interview                  or a video-conference. The applicant
                                                interview—an applicant must file an                      Office Action. The reply under 37 CFR                 must provide written authorization to
                                                Applicant Initiated Interview Request                    1.111 must be filed within the time                   conduct any Internet email
                                                Form (PTOL–413A) electronically via                      period for reply set forth in the Pre-                communications with the examiner. See
                                                EFS-Web, accompanied by a proposed                       Interview Communication. To ensure                    MPEP section 502.03 for more
                                                amendment or arguments, and schedule                     that the request will be processed and                information.
                                                the interview to be conducted within                     recognized timely, an applicant should                   The proposed amendment or
                                                two months or sixty days, whichever is                   file the request electronically via EFS-              arguments must be clearly labeled as
                                                longer, from the filing of the Applicant                 Web, selecting the document                           ‘‘PROPOSED’’ at the header or footer of
                                                Initiated Interview Request.                             description ‘‘Reply under 1.111 to Pre-               each page and filed electronically via
                                                                                                         Interview Communication’’ on the EFS-                 EFS-Web as an attachment to the
                                                1. Request To Not Have a First Action
                                                                                                         Web screen.                                           Applicant Initiated Interview Request
                                                Interview
                                                                                                            In this situation, a first action                  Form. The proposed amendment or
                                                   If an applicant wishes not to have the                interview will not be conducted, and a                arguments will not be entered as a
                                                first action interview, the applicant                    First Action Interview Office Action                  matter of right. The proposed
                                                should electronically file a letter                      will not be provided to the applicant.                amendment or arguments must address
                                                requesting not to have a first action                    The Pre-Interview Communication will                  every proposed rejection, objection, and
                                                interview within the time period set                     be deemed the first Office action on the              requirement set forth in the Pre-
                                                forth in the Pre-Interview                               merits. The examiner will consider the                Interview Communication, including
                                                Communication. In this situation, a first                reply under 37 CFR 1.111 and provide                  any issues of patentability raised by the
                                                action interview will not be conducted,                  an Office action in response to the reply,            art cited and/or applied in the KIPO
                                                and the examiner will provide the First-                 in due course. The Office action will be              search report, if necessary, in
                                                Action Interview Office Action setting                   the second Office action on the merits,               accordance with U.S. patent laws. The
                                                forth the requirements, objections, and                  and thus it could be a final Office                   examiner, based upon discussions,
                                                rejections relevant to the claimed                       action, a notice of allowability, or other            feedback, and agreement with an
                                                invention. However, such a request will                  appropriate action.                                   applicant during the interview may at
                                                not preclude the examiner from                                                                                 his or her discretion enter the
                                                contacting the applicant and conducting                  3. Schedule the First Action Interview
                                                                                                                                                               amendment if found sufficient to
                                                a regular interview in accordance with                      If an applicant wants a first action               advance prosecution on the merits. See
                                                MPEP section 713 to discuss any issues                   interview with the examiner, the                      MPEP sections 713.01 III and 713.04;
                                                or possible amendment to place the                       applicant must timely file an Applicant               see also MPEP sections 714 and
                                                application in condition for allowance.                  Initiated Interview Request Form (PTOL                1302.04. Even if the examiner denies
                                                To ensure that the request will be                       413A), electronically using EFS-Web,                  entry of the proposed amendment, the
                                                processed and recognized timely, an                      accompanied by a proposed amendment                   proposed amendment will be placed in
                                                applicant should file the request                        and/or arguments (as an attachment to                 the application file.
                                                electronically via EFS-Web, selecting                    the request). To ensure that the request                 Preparation for the Interview: An
                                                the document description ‘‘Request to                    will be processed and recognized                      applicant must be prepared to fully
                                                Not Have a First Action Interview’’ on                   timely, the applicant should select the               discuss the prior art of record, any
                                                the EFS-Web screen.                                      document description ‘‘First Action                   relevant interview talking points from
                                                   Once the petition for entry into the                  Interview—Schedule Interview                          the interview talking points posted at
                                                pilot program has been granted (one day                  Request.’’                                            http://www.uspto.gov/web/offices/pac/
                                                before it appears in PAIR), withdrawal                      An applicant must designate a                      dapp/opla/preognotice/fai_talking_
                                                from the pilot program is not permitted.                 proposed date to conduct the interview                points.pdf, and any rejections or
                                                Therefore, the USPTO will treat a                        to facilitate scheduling of the first action          objections with the intent to clarify and
                                                request for withdrawal from the pilot                    interview. The applicant’s proposed                   resolve all issues with respect to
                                                program filed after the mailing or                       date to conduct the interview must be                 patentability during the interview,
                                                notification of granting an applicant’s                  within two months or sixty days,                      including any issues of patentability
                                                petition to participate in the pilot                     whichever is longer, from the filing of               raised by the art cited and/or applied in
                                                program as a request to not conduct an                   the Applicant Initiated Interview                     the KIPO search report, if necessary, in
                                                interview, issue a Pre-Interview                         Request Form. An applicant should                     accordance with U.S. patent laws. An
                                                Communication, and subsequently enter                    consult the examiner’s work schedule                  applicant also must be prepared to
                                                a First-Action Interview-Office Action,                  provided in the Pre-Interview                         discuss any proposed amendment or
                                                in due course.                                           Communication and discuss with the                    arguments previously submitted and
                                                                                                         examiner the best date for conducting                 discuss and resolve any relevant issues
                                                2. File a Reply Under 37 CFR 1.111,                      the interview.                                        that arise. The interview talking points
                                                Waiving the First Action Interview and                      After filing the Applicant Initiated               posted at http://www.uspto.gov/web/
                                                First-Action Interview Office Action                     Interview Request Form, the applicant                 offices/pac/dapp/opla/preognotice/fai_
                                                   Applicants may file, preferably in                    must contact the examiner to confirm                  talking_points.pdf represent a non-
                                                conjunction with a request to not                        the interview date. The applicant’s                   exhaustive list of potential topics for
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                                                conduct the interview, a reply in                        failure to conduct an interview within                discussion in a first action interview.
                                                compliance with 37 CFR 1.111(b)–(c) to                   two months or sixty days, whichever is                The talking points are available to the
                                                address every rejection, objection, and                  longer, from the filing of Applicant                  public and the patent examining corps
                                                requirement set forth in the Pre-                        Initiated Interview Request Form will be              to assist and facilitate comprehensive
                                                Interview Communication, including                       treated as a failure to respond to the                and effective first action interviews.
                                                any issues of patentability raised by the                Pre-Interview Communication. See                         Multiple proposed amendments or
                                                art cited and/or applied in the KIPO                     section VII; subsection C (Failure to                 sets of arguments are not permitted.


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                                                                                Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices                                           39417

                                                  Inventor Participation: Inventor                       Form. If the examiner agrees to enter the             the KIPO examiner of record for the
                                                participation in the interview process is                proposed amendment, the examiner                      corresponding KIPO counterpart
                                                encouraged, as it may assist in the                      must annotate the first page of the                   application.
                                                resolution of outstanding rejections and/                proposed amendment (e.g., ‘‘OK to                       3. An agreement as to allowability is
                                                or objections.                                           enter’’). In an in-person interview, a                not reached, and applicant wishes to
                                                                                                         courtesy copy of the completed forms                  convert the previously submitted
                                                C. Failure To Respond to Pre-Interview                   will be given to the applicant at the                 proposed amendment into a reply under
                                                Communication                                            conclusion of the interview. The                      37 CFR 1.111(b) and waive receipt of a
                                                   If an applicant fails to: (1) Respond to              completed forms will then be promptly                 First-Action Interview Office Action.
                                                the Pre-Interview Communication                          made of record with a Notice of                       Applicants may request the USPTO to
                                                within the time period for reply or (2)                  Allowability and a Notice of Allowance                enter the previously filed proposed
                                                conduct the interview within two                         and Fees Due (PTOL 85). The Notice of                 amendment and/or arguments as a reply
                                                months or sixty days, whichever is                       Allowability and the Notice of                        under 37 CFR 1.111 to address every
                                                longer, from the filing of the Applicant                 Allowance, interview summary, and all                 rejection, objection, and requirement set
                                                Initiated Interview Request Form, the                    amendments made of record along with                  forth in the Pre-Interview
                                                Office will enter a First-Action                         a completed Notice of References Cited                Communication, waiving a First-Action
                                                Interview Office Action. Therefore, the                  form PTO–892 listing any newly cited                  Interview Office Action, if the proposed
                                                consequence for failure to respond to                    references will also be forwarded to                  amendment and/or arguments comply
                                                the Pre-Interview Communication is                       KIPO for consideration by the KIPO                    with the requirements of 37 CFR 1.121
                                                issuance of a First-Action Interview                     examiner of record for the                            and 37 CFR 1.111(b)–(c). If the examiner
                                                Office Action without the benefit of an                  corresponding KIPO counterpart                        agrees to enter the proposed amendment
                                                interview.                                               application.                                          as the reply under 37 CFR 1.111 to the
                                                                                                            2. An agreement as to allowability is              Pre-Interview Communication, the
                                                VIII. First-Action Interview and First-                  not reached. If the applicant and the                 examiner must annotate the first page of
                                                Action Interview Office Action                           examiner do not reach agreement during                the proposed amendment (e.g., ‘‘OK to
                                                A. First-Action Interview                                the interview, the examiner will set                  enter’’), and provide a statement in the
                                                                                                         forth any unresolved, maintained, or                  Interview Summary (e.g., ‘‘Applicant
                                                  The interview will be conducted in                     new requirements, objections, and                     requested to enter the proposed
                                                accordance with the procedure provided                   rejections in the First-Action Interview              amendment as a reply under 37 CFR
                                                in MPEP section 713 except as                            Office Action. The examiner also will                 1.111 to the Pre-Interview
                                                otherwise provided in this notice. The                   complete an Interview Summary,                        Communication, waiving the First-
                                                interview should focus on and include:                   highlighting the basis for any                        Action Interview Office Action’’). The
                                                  1. A discussion to assist the examiner                 unresolved, maintained, or new                        applicant cannot file any additional
                                                in developing a better understanding of                  requirements, objections, and rejections              amendment and/or arguments until the
                                                the invention;                                           as well as resolution of any issues that              mailing or notification of the next Office
                                                  2. A discussion to establish the state                 occurred during the interview, attaching              action.
                                                of the art as of the effective filing date               a copy of the completed Applicant                       In this situation, a First-Action
                                                of the claimed invention, including the                  Initiated Interview Request Form and                  Interview Office Action will not be
                                                prior art references cited by the                        any proposed amendments or                            provided to the applicant. The Pre-
                                                applicant and the examiner (as only                      arguments. In a personal interview, a                 Interview Communication and the
                                                applications subject to the First Inventor               courtesy copy of the completed forms                  interview will be deemed the first Office
                                                to File provisions of the Leahy-Smith                    may be given to the applicant at the                  action on the merits. The interview
                                                America Invents Act (AIA) are eligible                   conclusion of the interview. The                      summary and a completed Notice of
                                                for this pilot program); and                             completed forms will be promptly made                 References Cited form PTO–892 listing
                                                  3. A discussion of the features of the                 of record.                                            any newly cited references, if any, also
                                                claimed subject matter which make the                       For this situation, the First-Action               will be forwarded to KIPO for
                                                invention patentable, including any                      Interview Office Action is deemed the                 consideration by the KIPO examiner of
                                                proposed amendments to the claims.                       first Office action on the merits. Because            record for the corresponding KIPO
                                                  4. A discussion regarding any issues                   the requirements, objections, and                     counterpart application. The examiner
                                                of patentability raised by the art cited                 grounds of rejection are provided in the              will enter the proposed amendment
                                                and/or applied in the KIPO search                        Pre-Interview Communication and the                   and/or arguments, consider it as the
                                                report, if necessary, in accordance with                 First-Action Interview Office Action, the             reply under 37 CFR 1.111, and provide
                                                U.S. patent laws.                                        applicant has sufficient notice of the                an Office action in response to the reply.
                                                                                                         requirements, objections, and grounds                 The Office action will be the second
                                                B. Three Possible Outcomes of a First-
                                                                                                         of rejection. To avoid abandonment of                 Office action on the merits, and thus it
                                                Action Interview
                                                                                                         the application, the applicant must,                  could be a final Office action, a notice
                                                   1. An agreement is reached and all                    within two months or sixty days,                      of allowability, or other appropriate
                                                claims are in condition for allowance. If                whichever is longer, from the mailing or              action.
                                                the applicant and the examiner reach                     notification date of the First-Action
                                                agreement that the application is in                     Interview Office Action, file a reply in              C. Substance of Interview Must Be Made
                                                condition for allowance, the examiner                    compliance with 37 CFR 1.111(b)–(c).                  of Record
                                                must complete an Interview Summary                       This time period for reply is extendable                A complete written statement as to
srobinson on DSK5SPTVN1PROD with NOTICES




                                                (PTOL–413), enter and attach any                         under 37 CFR 1.136(a) for only two                    the substance of the interview with
                                                necessary amendments or arguments                        additional months. The First-Action                   regard to the merits of the application
                                                (e.g., the proposed amendment and/or                     Interview Office Action, interview                    must be made of record in the
                                                an examiner’s amendment), generate a                     summary and a completed Notice of                     application, whether or not an
                                                notice of allowability (PTOL–37), and                    References Cited form PTO–892 listing                 agreement with the examiner was
                                                attach a copy of the completed                           any newly cited references also will be               reached at the interview. It is the
                                                Applicant Initiated Interview Request                    forwarded to KIPO for consideration by                applicant’s responsibility to make of


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                                                39418                           Federal Register / Vol. 80, No. 131 / Thursday, July 9, 2015 / Notices

                                                record the substance of an interview,                    ADDRESSES:   You may submit comments,                 (CAF), 600 10th Street, Ft. Meade, MD
                                                and it is the examiner’s responsibility to               identified by docket number and title,                20755–5615.
                                                see that such a record is made and to                    by any of the following methods:
                                                                                                           * Federal Rulemaking Portal: http://                CATEGORIES OF INDIVIDUALS COVERED BY THE
                                                correct inaccuracies, including those
                                                                                                                                                               SYSTEM:
                                                which bear directly on the question of                   www.regulations.gov. Follow the
                                                patentability. See MPEP section 713.04.                  instructions for submitting comments.                   DoD civilian employees, federal
                                                                                                           * Mail: Department of Defense, Office               contractor personnel, active military
                                                  Dated: July 2, 2015.                                                                                         personnel, reserve and national guard
                                                                                                         of the Deputy Chief Management
                                                Michelle K. Lee,                                         Officer, Directorate of Oversight and                 personnel, whose personnel security,
                                                Under Secretary of Commerce for Intellectual             Compliance, Regulatory and Audit                      suitability, and eligibility for an HSPD–
                                                Property and Director of the United States               Matters Officer, 9010 Defense Pentagon,               12 compliant credential are adjudicated
                                                Patent and Trademark Office.                                                                                   by the DoD CAF.
                                                                                                         Washington, DC 20301–9010.
                                                [FR Doc. 2015–16850 Filed 7–8–15; 8:45 am]                 Instructions: All submissions received
                                                                                                                                                               CATEGORIES OF RECORDS IN THE SYSTEM:
                                                BILLING CODE 3510–16–P                                   must include the agency name and
                                                                                                         docket number for this Federal Register                  Information used to view and review
                                                                                                         document. The general policy for                      adjudicative actions, determinations,
                                                DEPARTMENT OF DEFENSE                                    comments and other submissions from                   and decisions on summary investigation
                                                                                                         members of the public is to make these                packages and documenting records
                                                Office of the Secretary                                  submissions available for public                      conducted by Federal investigative
                                                [Docket ID: DoD–2015–OS–0064]                            viewing on the Internet at http://                    organizations (e.g., U.S. Office of
                                                                                                         www.regulations.gov as they are                       Personnel Management (OPM)) and
                                                Privacy Act of 1974; System of                           received without change, including any                locator references to such investigations.
                                                Records                                                  personal identifiers or contact                       Records documenting fitness
                                                                                                         information.                                          determinations, eligibility for an HSPD–
                                                AGENCY:    Defense Logistics Agency, DoD.                                                                      12 compliant credential, and the
                                                ACTION:    Notice to add a new system of                 FOR FURTHER INFORMATION CONTACT: Mr.
                                                                                                                                                               personnel security adjudicated and
                                                records.                                                 LaDonne L. White, HQ Privacy Officer,
                                                                                                                                                               management process, to include an
                                                                                                         Defense Logistics Agency, Headquarters
                                                                                                                                                               individual’s Social Security Number
                                                SUMMARY: The Defense Logistics Agency                    McNamara Complex 8725 John J.
                                                                                                                                                               (SSN); DoD Identification Number (DoD
                                                proposes to add a new system of                          Kingman Rd, Suite 3533, Fort Belvoir,
                                                                                                                                                               ID Number); name (including current,
                                                records, S240.28 DoD, entitled ‘‘Case                    VA 22060–6221 or by calling (703) 767–
                                                                                                                                                               former, and alternate names); date of
                                                Adjudication Tracking System (CATS)’’                    5045.
                                                                                                                                                               birth (DOB); place of birth; country of
                                                for personnel security, suitability,                     SUPPLEMENTARY INFORMATION: The                        citizenship; type of DoD affiliation;
                                                fitness, access management, and                          Defense Logistics Agency notices for                  employing activity; current employment
                                                National Security that provides a                        systems of records subject to the Privacy             status; position sensitivity; personnel
                                                common comprehensive medium to                           Act of 1974, as amended, have been                    security investigative basis; status of
                                                record and document personnel security                   published in the Federal Register and                 current adjudicative action; security
                                                adjudicative actions within the                          are available from the address in FOR                 clearance eligibility and access status;
                                                Department, federal agencies, and for                    FURTHER INFORMATION CONTACT or from                   whether eligibility determination was
                                                DoD contractors; CATS also provides a                    the Defense Privacy and Civil Liberties               based on a condition (personal, medical,
                                                status of investigative and adjudicative                 Division Web site at http://                          or financial), deviation from prescribed
                                                updates to security officers and security                dpcld.defense.gov/.                                   investigative standards, or waiver of
                                                managers, and appropriately screened,                      The proposed system report, as                      adjudication guidelines; reports of
                                                investigated, and eligible users with                    required by the Privacy Act of 1974, as               security-related incidents, to include
                                                direct access to CATS based on a user’s                  amended, was submitted on June 19,                    issue files; suspension of eligibility and/
                                                specific functions, security eligibility,                2015, to the House Committee on                       or access; denial or revocation of
                                                and access level; This includes the                      Oversight and Government Reform, the                  eligibility and/or access; eligibility
                                                adjudicators in the DoD Central                          Senate Committee on Governmental                      recommendations or decisions made by
                                                Adjudications Facility (CAF) and                         Affairs, and the Office of Management                 an appellate authority; non-disclosure
                                                personnel security officers in the                       and Budget (OMB) pursuant to                          execution dates; indoctrination date(s);
                                                services, DoD Components, approved                       paragraph 4c of Appendix I to OMB                     level(s) of access granted; debriefing
                                                non-DoD agencies, and Industry security                  Circular No. A–130, ‘‘Federal Agency                  date(s) and reasons for debriefing; off-
                                                offices with an approved DD Form 254,                    Responsibilities for Maintaining                      site visit requests; foreign travel and
                                                DoD Contract Security Classification                     Records About Individuals,’’ dated                    contacts; and security reporting, to
                                                Specification. CATS also provides                        February 8, 1996 (February 20, 1996, 61               include results from continuous
                                                records to the DoD Personnel Security                    FR 6427).                                             evaluation and insider threat; and self-
                                                Research Center (PERSEREC) to create                       Dated: June 22, 2015.                               reporting.
                                                models for personnel security
                                                                                                         Aaron Siegel,
                                                continuous evaluation and insider                                                                              AUTHORITY FOR MAINTENANCE OF THE SYSTEM:
                                                                                                         Alternate OSD Federal Register Liaison
                                                threat assessment, and compile                                                                                   E.O. 10450, as amended, Security
                                                                                                         Officer, Department of Defense.
                                                statistical data used for analyses and                                                                         Requirements for Government
                                                studies.                                                 S240.28 DoD                                           Employment; E.O. 10865, as amended,
srobinson on DSK5SPTVN1PROD with NOTICES




                                                DATES: Comments will be accepted on or                   SYSTEM NAME:                                          Safeguarding Classified Information
                                                before August 10, 2015. This proposed                      Case Adjudication Tracking System                   Within Industry; E.O. 12829, as
                                                action will be effective the date                        (CATS)                                                amended, National Industrial Security
                                                following the end of the comment                                                                               Program; E.O. 12968, as amended,
                                                period unless comments are received                      SYSTEM LOCATION:                                      Access to Classified Information; E.O.
                                                which result in a contrary                                 Department of Defense (DoD)                         13467, Reforming Processes Related to
                                                determination.                                           Consolidated Adjudications Facility                   Suitability for Government


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Document Created: 2018-02-23 09:14:04
Document Modified: 2018-02-23 09:14:04
CategoryRegulatory Information
CollectionFederal Register
sudoc ClassAE 2.7:
GS 4.107:
AE 2.106:
PublisherOffice of the Federal Register, National Archives and Records Administration
SectionNotices
ActionNotice.
DatesEffective Date: September 1, 2015.
ContactDaniel Hunter, Director of International Work Sharing, Planning, and Implementation, Office of International Patent Cooperation, by telephone at 571-272-8050 regarding the handling of any specific application participating in the pilot. Any questions concerning this notice may be directed to Joseph Weiss, Senior Legal Advisor, Office of Patent Legal Administration, by phone (571) 272-7759. Any inquiries regarding this pilot program can be emailed to [email protected]
FR Citation80 FR 39412 

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