Strategic Use of Patent Examiner Interviews
 

Strategic Use of Patent Examiner Interviews

Posted on 09-12-2018

By: Frank DeLucia and Luciano Ricondo, Merchant & Gould

After a patent application is filed in the U.S. Patent and Trademark Office (USPTO), and during the stage in which the application is being examined by a patent examiner, it can often be helpful to conduct an interview with the examiner in an attempt to advance the prosecution of the application towards allowance. This article provides guidance for practitioners on when an interview with a patent examiner is permitted under USPTO rules, who can participate in the interview, practical tips on how to request and conduct an interview, what to do after the interview is conducted, and USPTO programs that affect examiner interview practice.

SUCH AN INTERVIEW IS TYPICALLY CONDUCTED BETWEEN A representative of the patent applicant (e.g., an attorney or patent agent) and the examiner and, on certain occasions, may also include the patent applicant/inventor and one or more supervisory examiners. The interview can be helpful to provide the examiner with a better understanding of the invention claimed in the application, as well as how the claimed invention is distinguishable over the prior art of record, in addition to addressing other substantive issues that may be outstanding.

As a preliminary matter, the rules and procedures governing interviews in patent applications are largely covered by Section 713 of the Manual of Patent Examining Procedure (MPEP), 2016-700 Manual of Patent Examining Procedure 713. The Patent Office also has made available helpful Interview Practice FAQs at https://www.uspto.gov/patent/laws-and-regulations/interview-practice/interview-practice-faqs.

When Is an Examiner Interview Permitted?

It is important to know the USPTO’s rules governing when an interview may be granted. The following sections describe rules and circumstances for granting an interview at different stages of the patent application process.

Not Permitted before the Filing of a Patent Application

An interview with an examiner before an application is filed is generally never permitted. The USPTO does not permit a patent applicant to feel out an examiner on his or her opinion about an invention or to attempt to gauge the prospects of obtaining a patent on aspects of an invention before a patent application for the invention is filed in the USPTO. See MPEP 713.03. Thus, to the extent an inventor desires to investigate beforehand whether it is worth incurring the time and expense associated with the patent application process, the inventor will need to pursue other investigative avenues. For example, many inventors conduct prior art searches and/or consult with an attorney or patent agent with expertise in the field before deciding whether to pursue a patent. While an inventor may conduct a search on his or her own, most inventors lack the know-how to do so, and thus, it is often best to have the search conducted by an expert who has access to the appropriate search databases.

Before First Office Action

An interview before a first office action is ordinarily not granted unless the application is a continuation application. See MPEP 713.02. Also, if the application is filed under a special program such as the First Action Interview Pilot or Accelerated Examination, an interview may be appropriate according to the published guidelines of that program. See https://www.uspto.gov/patent/initiatives/accelerated-examination for more information about the Accelerated Examination.

After First Office Action

After a patent application is filed and examined, the USPTO will issue an office action treating the claimed invention on the merits. After the issuance of a first office action, the patent examiner must grant an interview, if requested by the patent application, as a matter of right. This means that, if appropriately requested, the examiner must grant the request for interview. The interview may be held at any time within the permitted statutory period (e.g., typically six months). There is no fee for an interview even if requested after the expiration of the shortened statutory period (e.g., typically three months).

After Final Office Action

In practice, most examiners will grant an interview after a final office action has issued if an interview is deemed to be helpful to the advancement of the application’s examination process. See MPEP 713.09. However, a request for interview made after issuance of a final office action may be refused by the examiner if, for example, the patent applicant seeks only to restate previously made arguments in favor of patentability or to discuss new claim limitations that would require more than nominal reconsideration or new search.

After Appeal Brief Has Been Filed

Interviews after an appeal brief has been filed are not granted because, at this stage of prosecution, the application has been transferred to the Patent Trial and Appeal Board (PTAB), and the examiner no longer has jurisdiction over the application. See MPEP 713.05.

After Notice of Allowance

After the USPTO deems that a patent application is in condition for allowance, the USPTO issues a notice of allowance to the patent applicant. The USPTO states that an interview is not permitted after a notice of allowance has been mailed in the application “except in unusual situations.” See MPEP 713.05. However, in practice, various issues often may be discussed with an examiner after allowance, such as procedural issues (e.g., an unacknowledged claim to priority or information disclosure statement citation form) or a possible amendment after allowance under 35 U.S.C. § 312.

Who Can Participate in an Examiner Interview

Various parties may participate in an interview, including registered practitioners, inventors/applicants, examiners, and supervisory examiners. Each of these is discussed in turn below.

Registered Practitioners

Most interviews are conducted by practitioners who are registered to practice before the USPTO, such as a registered patent attorney or agent representing the applicant. While in practice most interviews are conducted without the applicant or inventor being present, those parties are permitted to attend the interview, as mentioned below. It is important to note that an interview typically will not be granted to a registered practitioner unless a power of attorney granting the practitioner the right to represent the applicant is filed in the USPTO.

Unregistered or Suspended Practitioners

Examiners are forbidden to hold either oral or written communications with an unregistered or a suspended attorney or agent regarding an application, and thus, any such parties are not permitted to conduct an interview with a patent examiner.

Inventors/Applicants

Inventors/applicants may participate in an interview with an examiner. These parties can be persuasive because they may be experts in their respective fields and have first-hand knowledge of the claimed invention and how it distinguishes over the prior art of record. Nonetheless, care should be taken to avoid such parties unwittingly stating something unnecessary on the record that can be used against the patent application or the interpretation of claims.

Pro Se Applicant

A pro se applicant may conduct an interview without a registered practitioner. However, because the patenting process is complicated and governed by many detailed rules requiring specialized knowledge, it is strongly recommended practitioners advise patent applicants to use a registered practitioner to conduct the process, including any interviews.

Examiners

The examiner responsible for examining the patent application will participate in the interview and may be accompanied by other examiners including his or her supervisor (as described below).

Supervisory Examiners

In some instances, the examiner’s supervisor may participate in the interview, either alone or with a primary examiner. This may occur when the examiner directly responsible for examining a patent application does not have negotiating authority to grant an application. Whether a supervisory and/or primary examiner participates in an interview will be determined by the USPTO.

When an Interview Is Helpful

There is no requirement to conduct an interview with an examiner in the normal course of patent prosecution, except in the case where a request to participate in the After Final Consideration Pilot (AFCP) 2.0 program is filed. (The AFCP 2.0 program requires that the applicant be willing and available to participate in any interview requested by examiner). However, an interview can be helpful in the event an impasse is reached with the examiner during the prosecution process. In practice, having an interview provides an opportunity to have the examiner explain, first-hand, the reasons for rejecting a patent application. An interview also affords a patent applicant with an opportunity to explain to the examiner why it is believed that a claimed invention is worthy of patent protection and to discuss with the examiner possible ways to amend the claims of a patent application, if deemed appropriate, to overcome grounds of rejection.

An examiner interview is also helpful when there is a clear misunderstanding that can be resolved easily during a verbal conversation versus in writing. For example, it may sometimes be easier to articulate a mistake made by the examiner in an office action (e.g., misidentified prior art or the like) by way of an interview versus by way of a written response. Verbal communication also has the benefit of substantively enabling issues to be discussed and addressed while minimizing what is placed in the written USPTO record for a patent application, thereby reducing possible file history estoppel issues.

There are no USPTO fees associated with having an examiner interview. Thus, an examiner interview will not cost anything, aside for possible time spent by a registered practitioner preparing for and conducting the interview

In-Person vs. Telephone Interviews

Most interviews are conducted via telephone, as this is the easiest and most convenient way to reach an examiner. Some patent examiners work off-site from USPTO offices, as mentioned below, and thus prefer telephone interviews.

An applicant may consider having an in-person, face-to-face interview. This type of interview can be helpful to develop rapport with an examiner and can be especially helpful if it is desired to employ exhibits or invention prototypes during the interview. See MPEP 713.08. An in-person interview, when scheduled, must be held on a USPTO campus where the examiner is located. The USPTO is headquartered in Alexandria, Virginia, and this is where most in-person interviews take place. However, an interview may also take place at a regional office if that is where the examiner is located. Currently, the USPTO has regional offices in San Jose, Denver, Detroit, and Dallas

Some examiners work remotely, and thus an in-person interview with them may not be possible. In such cases, the USPTO also allows an interview to be conducted via video conference. See MPEP 713.01. If an interview is conducted via video conferencing, the video conference must originate or be hosted by the examiner. Examiners are prohibited from conducting interviews via a video conference hosted by a patent applicant or third party. See MPEP 713.01.

Requesting an Examiner Interview

Most examiner interviews are requested by calling the examiner directly. The examiner’s telephone number is included in the conclusion section of every office action. An applicant may also submit an Applicant-Initiated Interview Request Form to request an interview; however, this is less common and less time-efficient than calling the examiner directly to request an interview.

Preparing for an Examiner Interview

Although an interview agenda is not required by the rules, in practice it often is best for a patent applicant to provide an agenda for the interview to the examiner at least 24 hours before the interview is scheduled to take place so that the examiner can adequately prepare for the interview. The agenda will help guide the interview and provide a focused discussion on the issues that will be discussed during the interview.

The interview agenda should include the date and time of the interview, the names of the persons who will participate in the interview, and the location of the interview if it is being conducted in person. The interview agenda should briefly cover the matters that will be addressed during the interview. For example, a hypothetical agenda could list the matters such as:

  • The rejections under 35 U.S.C.S. § 102 and 35 U.S.C.S. § 103 for lack of novelty and non-obviousness, respectively
  • The rejection under 35 U.S.C.S. § 101 for unpatentable subject matter
  • The rejections under 35 U.S.C.S. § 112(a), (b)
  • The objections to the claims

The interview agenda may also include proposed claim amendments. In practice, this can be helpful because it enables an applicant to receive feedback from the examiner about a proposed claim amendment before filing a formal, written response to an office action. This approach can save costs and speed up the examination of the application because it can lead to some form of agreement being reached during the interview as to how to overcome an issue raised in an office action, thereby enabling the patent applicant to tailor the written response to the office action accordingly. Indeed, oftentimes during an interview, the examiner may propose a claim amendment or other course of action to advance prosecution.

Interview agendas are typically faxed to an examiner; however, in some cases they can be emailed to the examiner. If emailed, examiners typically require the signing of an Authorization for Internet Communications form, authorizing communication via email. When submitting an interview agenda, the agenda should be labeled Unofficial Communication to indicate that it is not a formal written response, in the event that it becomes part of the USPTO file. This can be helpful to avoid possible future issues relating to patent prosecution history estoppel in the event that a patent, once granted, later becomes involved in litigation. It also is prudent to label the agenda Privileged and Confidential.

Practical Considerations for Conducting an Examiner Interview

If the interview is to be conducted via telephone or video conference, find a quiet room for conducting the interview. For most registered practitioners, this means their office or a conference room. If multiple people will participate in the interview (e.g., more than one registered practitioner, multiple inventors, etc.), a large conference room should be used for conducting the interview.

It is advisable to start the interview by providing a short introduction of the invention (e.g., describe the invention, its objectives, the problems and limitations in the relevant industry and/or state of the art, and how the invention overcomes those problems and limitations). That introduction should be followed by addressing the substantive issues raised in the office action. For example, in the case of a prior art rejection, a description of how the invention, as claimed, distinguishes over the prior art used in the rejection should be provided.

If the examiner is not persuaded by these arguments, a proposed claim amendment can be discussed that might persuade the examiner to withdraw the rejection. Otherwise, if it is strongly believed that the claimed invention is patentable over the prior art without any additional claim amendment being made, then no claim amendment need be proposed, and normal written prosecution, including a possible appeal to the PTAB, should then be pursued.

During the interview, it is also advisable to discuss the substance of a written interview summary with the examiner. As is described in more detail below, the examiner must submit a written interview summary after the completion of each interview with an applicant. The interview summary will form a part of the written record of the application. Thus, it is helpful to discuss the contents of the examiner’s interview summary with the examiner during the interview to ensure the interview summary on the record reflects the applicable content in a light most favorable to the applicant.

You and anyone accompanying you should be courteous and respectful during the entire interview. Typically, most interviews last approximately 30 minutes; however, depending on the discussion and the subject matter of the interview, an interview can be shorter or longer.

Many times, an examiner will inform a patent applicant at the conclusion of an interview that he or she will need to further consider the arguments and/or claim amendments after a written response to an office action is filed before making a formal decision on the merits of a claimed invention. Even if an examiner agrees that an argument or claim amendment will overcome an issue (e.g., a prior art rejection) raised in an office action, the examiner will most often then inform the applicant that the examiner will need to conduct a further search after a written response to an office action is filed before deciding whether to allow the claims of the application. However, this should not discourage a patent applicant from conducting the interview because it often is a good sign that the examiner agrees to the position taken by the applicant during the interview.

Following Up after the Examiner Interview

A written statement of the substance of the interview must be made of record, whether or not an agreement as to the status of the claimed invention was reached with the examiner during the interview. See MPEP 713.04. The only instances when an interview summary is not required to be made of record (by either the examiner or the applicant) are for discussions regarding merely procedural matters, such as, restriction requirements (see MPEP 812.01), or typographical or other procedural errors in a written office action or other communication from the USPTO.

After an interview is completed, the examiner must complete and issue an Interview Summary Form PTOL-413 that will be made part of the record. See MPEP 713.04. The PTOL-413 typically includes the following information:

  1. Application number
  2. Name of applicant
  3. Name of examiner
  4. Date of interview
  5. Type of interview (personal, telephonic, or video conference)
  6. Name of participant(s) (applicant, applicant’s representative, etc.)
  7. An indication whether or not an exhibit was shown or a demonstration conducted
  8. An identification of the claims discussed
  9. An identification of the specific prior art discussed
  10. An indication as to whether an agreement was reached, and if so, a description of the general nature of the agreement
  11. The signature of the examiner who conducted the interview
  12. Names of other USPTO personnel present at the interview

The PTOL-413 form also contains a statement reminding the applicant of his or her responsibility to record the substance of the interview. Often the examiner will attach the interview agenda to the Interview Summary.

The Interview Summary Form PTOL-413B will not be considered a complete and proper recordation of the interview unless it includes, or is supplemented by the applicant or the examiner to include, the following items (if applicable):

  1. A brief description of the nature of any exhibit shown or any demonstration conducted
  2. Identification of the claims discussed
  3. Identification of specific prior art discussed
  4. Identification of the proposed amendments, unless these are already described on the interview summary form completed by the examiner
  5. The general thrust of the arguments of the applicant and the examiner
  6. A general indication of any other pertinent matters discussed
  7. If appropriate, the general results or outcome of the interview

In the case of an interview via electronic mail, a paper copy of the contents exchanged over the internet must be made and placed in the patent application file as required by the Federal Records Act in the same manner in which the PTOL-413 is entered. Regarding the general thrust of the arguments (item 5) for PTOL-413, the identification of arguments need not be lengthy or elaborate, and a verbatim or highly detailed description of the arguments is not required. Typically, the identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file.

An applicant must also submit an interview summary except where the interview was initiated by the examiner and the examiner indicated on PTOL-413B that the examiner will provide a written summary. If an interview summary is not submitted by the applicant before or with a written response filed in reply to an office action, the response may be deemed not fully responsive by the USPTO, and the USPTO will give the applicant a two-month time period to submit the interview summary. An examiner will check the applicant’s interview summary for accuracy. If there is an inaccuracy, the examiner will point it out in the next communication (e.g., rejection, interview summary, or notice of allowability).

Although the interview summary can be filed as a separate document in the application file, the interview summary typically is included in the body of the written response filed after the interview and in reply to the outstanding office action. It is important to remember that an interview or interview summary does not obviate the need to file a written response to an office action, even if an informal agreement was reached with the examiner during the interview. Indeed, if a written response to the office action is not filed by the applicable deadline, the application will become abandoned.


Frank DeLucia is a partner at Merchant & Gould. His practice focuses on patent prosecution, contested proceedings before the USPTO, strategic international management of patent portfolios, invalidity and non-infringement opinions, and client counseling. In addition to his patent practice, Frank has experience in prosecuting trademarks. Luciano Ricondo is an associate at Merchant and Gould. He prepares and prosecutes domestic and foreign utility patent applications in the mechanical, electrical, computer, and software-related arts. He also prepares and prosecutes domestic and foreign design patent applications.


To find this article in Lexis Practice Advisor, follow this research path:

RESEARCH PATH: Intellectual Property & Technology > Patents > Patent Prosecution > Practice Notes

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