Examiner Interviews * Best Practices

Report
Interview Time
FY 2008 – FY 2013
180,000
170,000
160,000
150,000
140,000
130,000
120,000
Hours
110,000
100,000
90,000
80,000
70,000
60,000
50,000
40,000
30,000
20,000
10,000
0
October
November
December
January
February
20 08
20 09
March
20 10
April
20 11
May
20 12
June
July
August
September
20 13
23,503 hours in FY 2013, compared with 21,273 hours in FY 2012. 6,651 interview hours in FY 13 have been charged
through the AFCP program.
2
100%
Based on random samples of over 28,000 Allowances and Final Rejections from FY 2008 – FY 2012
99%
% Compliance Rate
98%
97%
97.4%
96%
95%
96.3%
95.1%
94%
93%
93.3%
92%
91%
90%
In-process
In-process
Allowance
Allowance
Compliance Rate
Compliance Rate
Compliance Rate
Compliance Rate
with Interview
without Interview
with Interview
without Interview
12/3/12
•
Useful content of a detailed Agenda may include:
 General intent and/or goal of interview
 Brief summary of arguments (if applicable)
 Applied references
 Evidence relied upon
 Proposed amendments
•
Not submitting an agenda is not a valid reason to deny an
interview
•
Review the application history including the prior art
•
Understand the inventive concept
•
Identify allowable subject matter where appropriate
•
Be prepared to explain position of previous action
• Use the appropriate Interview Summary form and fill out completely
• Attach agenda and any items (including proposed amendments)
provided for the interview
• Be specifics regarding issues discussed
• Clearly document all agreements
• Agreement can be reached for various issues, such as allowability,
interpretation of claim limitations, priority dates, application of case law,
next steps to be taken, statutory subject matter, etc.
• Make sure the record is complete
5
• Clarify Agreements
 Record Specific Issues Resolved
 Note Any Interpretations Agreed Upon
 Identify Allowable Subject Matter, if any
 Record Specific Claim Language
 Specify What Prior Art is Overcome
• Commit to Specific Steps & Assign responsibility
 Examiner steps, for example:
- Consult with Subject Matter Expert
- Perform Update Search
 Applicant steps, for example:
- Consult with Applicant
- File Response
• Provide Clear Timeline & Follow-Up
6
7
•
Telephonic interviews
o
•
in 2011, 164 cases interviewed, both first and final
OAs

27% cases had next action allowances
In-person interviews
o
20 cases interviewed in person over a 4 day period






5
1
1
6
4
3
allowances
abandoned
notice of appeal
RCEs
new office actions
awaiting next action


Faster resolution of issues, allowance of
applications
Improved patent quality
◦ USPTO recently analyzed correlation between
patent quality and whether an interview was
conducted
◦ “The data shows that interviews help decrease
both improper allowances and improper
rejections by approximately 40 percent compared
to applications without interviews prior to the
final disposition.”
Director Kappos’ Public Blog, January 15, 2013

Discuss possible ways of overcoming
rejections without creating extensive file
history that can be exploited during
litigation
◦ Find out if the examiner thinks there is allowable
subject matter
◦ Find out if the examiner has problems that have
not been stated in the written record and that can
be easily addressed

Introduce the examiner to the inventor(s)
◦ Many examiners have science and engineering
backgrounds, and may appreciate discussing the
technology with an inventor and feel more
personally connected to the case after meeting
him or her
◦ The inventor is likely in a better position to
explain the nuances of the technology

Develop a rapport with the examiner
◦ Establish credibility and trust
◦ Get more assistance during prosecution
◦ You may have many other applications with the
same examiner

Understand the psychology and perspective
of examiners in general
◦ Examiners are just doing their jobs – don’t make
it personal
 Always be professional and courteous
◦ Some examiners feel underpaid and
underappreciated
 A little bit of respect can go a long way

Understand the psychology and perspective
of examiners in general
◦ Many examiners are not attorneys
 They generally do not view the examination process
as adversarial, so don’t treat it that way
 Unless there are glaring legal errors in the
rejections, it may be better to focus the arguments
on the technology, e.g., explain distinctions from
the prior art
 It is more effective to cite legal principles from the
M.P.E.P. rather than case law

Understand the psychology and perspective
of examiners in general
◦ Examiners work under significant time constraints
 Don’t expect as much time investment by the
examiner after FAOM, and especially after-final
 Interview after FAOM, not after-final
 Propose solutions that will make their jobs easier,
e.g., narrowing amendments, CONS

Understand the psychology and perspective
of examiners in general
◦ Examiners work under significant time
constraints
 Don’t pile on weak arguments – annoying for the
examiner, and makes it easier for the examiner to
focus on the weakest arguments

Understand the particular examiner on your
application
◦ Is the examiner new and still learning?
◦ Has the examiner made an honest mistake?
◦ Is the examiner just being unreasonable?

Thorough preparation is essential
◦ Don’t waste valuable time during the interview
◦ Must have complete knowledge of the file history,
cited references, and relevant law
◦ Think through all possible
arguments/counterarguments

Thorough preparation is essential
◦ Mock interviews can be useful to explore how
different arguments may play out, and identify
potential weaknesses
◦ Have multiple fallback positions and possible
claim amendments ready so that you can respond
to whatever course the interview takes

Listen to the examiner, ask questions, and
create a dialogue
◦ Don’t just lecture

Bring an inventor
◦ Often useful to help explain the technology and
establish a rapport
◦ But generally not a good idea to allow the
inventor to discuss the legal issues, unless he or
she is qualified

Preparing an agenda
◦ Provide the examiner with enough information to
be prepared to cover all the issues you want to
◦ But don’t provide too many details, so that you
have some flexibility in the interview, and in case
the agenda is made part of the official record

Timing of the interview
◦ After FAOM
◦ A few weeks out from end of a quarter, but not
end of quarter

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