Hip & Knee Surgery - Orthoworld

SURGEON AS ENTREPRENEURU.S. Patent Office Expands andEnhances the First InterviewPilot ProgramAuthor: Perry E. Van Over, EsquireI have the pleasure of discussing the topic of this present article,which is a recent initiative by the Patent Office that should havevery positive results for the inventor/entrepreneur and patentapplicant: the “Enhanced First Action Interview Pilot Program.”In an earlier article, entitled “Resolving Prolonged Pendency ofPatent Applications; a Step in the Right Direction” (OPN,July/August 2008), I provided a summary of a First Interview PilotProgram that took effect on April 28, 2008. On that date, the U.S.Patent and Trademark Office (USPTO) initiated a pilot program inwhich the patent applicant, who complies with certain requirements,will receive the results of a prior art search conducted by theexaminer and then within a limited time period be permitted toconduct an interview with the examiner to discuss the cited priorart references prior to the first officeaction on the merits. That pilot programwas tested in a very limitedtechnology area and with a limited filingdate window of opportunity. Atthat time, the only two groups ofpatent applications that were eligiblefor participation in the pilot programwere those classified in Class 709(Electrical Computers and DigitalProcessing Systems: Multi-ComputerData Transferring) and Class 707(Data Processing: Database and FileManagement or Data Structures). Inthat earlier article I made the pointthat although the concept was verypromising, the initial pilot programwas very limited and would thereforehave no immediate impact on patentprosecution of surgical devices,implants or instruments. Fortunately,the initial and very narrowly defined pilot program has yielded sufficientlygood results so as to prompt the USPTO to expand the pilotprogram into more diverse technology areas and to revise the proceduresof the pilot program in ways that are beneficial to the patentapplicant.The Enhanced First Action Interview Pilot Program has, as ofOctober 2009, been expanded to include diverse technologies thatare examined in over 30 additional Patent Office Art Units. Thesenew technology areas range from computers, cell phones, navigationaldevices, well-digging, boring and other technologies that tothe readers of this publication may seem uninteresting. It is in the“It is clear that if the examinerhad the benefit of a betterunderstanding of the inventionand how it is distinguishedover the relevantprior art much earlier in theprocess, the entire dialoguebetween applicant and examinerwould be more meaningfuland productive.”“other technologies” groups that the surgeon, inventor/entrepreneurwill be interested. Among the Patent Office Art Units includedin this first expansion of the pilot First Action Interview PilotProgram are some Art Units that are grouped under TechnologyCenter 3700, “Mechanical Engineering, Manufacturing andProducts.” Specifically, Art Units 3735-3737, 3739, 3762, 3766, 3768and 3769 are now designated as participating Art Units in theexpansion of the pilot program. The technologies that are dealt within one or more of these listed Art Units include surgery and prosthetics.For some readers the inclusion of those particular Art Unitsmay be very good news. Unfortunately, not all surgical devices andmethods are included in those few surgery Art Units now includedin the pilot program.When a patent applicant files hispatent application, the USPTO willmake a judgment as to which ArtUnit is most appropriate to examinethe application. Considering thatthere are only eight Art Units thatcarry the general descriptor of “surgery”or “prosthetics,” it is obviousthat a patent for a surgical instrumentsubmitted for examinationmay be assigned to Art Unit 3735 orArt Unit 3736, etc. However, anewly filed patent applicationdirected to a surgical instrumentand/or surgical method may also beassigned to 3733, 3775, 3655 or someother Art Unit that also bears thegeneral description of “surgery,”but is not listed as part of this firstexpansion of the pilot program. Forthose who do file a patent applicationand discover that the invention has been assigned to one of theincluded Art Units, the opportunity to participate in the EnhancedFirst Interview Pilot Program should be carefully considered. Thosewho find their surgery-related patent application not included atthis time should still become aware of the possible advantages ofthe pilot program and look forward to the day (hopefully verysoon) when the pilot program will be further expanded to includetheir invention application. Considering the prolonged time of pendencyfrom the filing date of an application to the date when anExaminer first examines the application on the merits, it is very pos-continued on page 5452 ORTHOPAEDIC PRODUCT NEWS • November/December 2009