One interesting feature on the USPTO’s Patent Application Information Retrieval (PAIR) website is the "First Action Prediction" tool. Once you enter an application number, you can click on the "First Action Prediction" tab, and it will give you an estimate of the time to the first Office Action. There also is an option to generate a dated "letter" that will print out on USPTO letterhead. Typical text of the letter is reproduced below:
It is estimated that this application will receive an Office action in approximately 20 months. This is an estimate that is based on the current inventory level of applications filed in this art area and the current staffing levels in this Art Unit. The USPTO is dedicated to minimizing first action and total pendency, and we are targeting resources to help address backlogs in art areas with high new application filings. Thank you for your inquiry.
In my practice, we may use this information to prioritize Information Disclosure Statement (IDS) filings, to assess how much time we have to prepare a preliminary amendment, or simply to inform clients of when they can expect an Office Action.
How Reliable Is the Prediction Tool?
If you use this tool, you should know that its predictions are not always accurate. If the predicted first Action is many months out, it could be useful to obtain another prediction in a few months time. If the predicted first Action is within a few months, and the case has been assigned to an examiner, it might be more useful to call the examiner directly.
My recent experience with the First Action Prediction tool motivated me to write this article. On August 2, we obtained a First Action Prediction that gave us an estimate of 11 months to the first Action. An Office Action issued about 10 days later! This is not the first time the First Action Prediction has proved to be inaccurate, but it may be one of the more egregious misestimations.
The USPTO Explains
I contacted the USPTO about my experience, and spoke with a very helpful person who shed some light on how the First Action Prediction tool works. He emphasized that it is designed to provide a rough estimate only, and that the actual time to a first Action can vary considerably from the estimate.
He explained that the tool uses art unit statistics such as the number of examiners, number of applications, and average number of applications processed over a given time period, and factors that information with application-specific information, such as the application filing date (which provides an indication of where it stands in the examination queue).
He noted that several events can undermine the accuracy of the prediction, including a change in examiner staffing levels, a supervisor’s decision to move an application more quickly (due, for example, to its aging filing date), or an examiner’s decision to examine a case out of order (examiners generally are permitted to chose any case from a six month window). From his perspective, any application with a First Action Prediction of 12 months or less could be acted on at any time.
Using The Prediction Tool
In view of my recent experience and this information from the USPTO, I will modify my reliance on the First Action Prediction tool. If the prediction is longer than 12 months, I still will assume that I have at least a few months before the first Action—perhaps at my peril! If the prediction is shorter than 12 months, I will understand that an Action probably will be issued soon. If the application has been assigned to an examiner, I will be aware that an Action could issue at any time, and might call the examiner for a more accurate estimate if I would like to be able to complete a filing (such as an IDS or preliminary amendment) before the case is take up for examination.