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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.
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.
To read the full practice note in Lexis Practice Advisor, follow this link.
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.
For a general overview of the patent examination process, see
> UTILITY PATENT APPLICATION EXAMINATION PROCESS
RESEARCH PATH: Intellectual Property & Technology > Patents > Patent Prosecution > Practice Notes
For an example of an interview summary, see
> STATEMENT OF SUBSTANCE OF EXAMINER INTERVIEW
RESEARCH PATH: : Intellectual Property & Technology > Patents > Patent Prosecution > Forms
For advice on appealing from an unsuccessful patent examination, see
> APPEALS FROM PATENT EXAMINATION
For a copy of the form needed to obtain a hearing before the Patent Trial and Appeal Board, see
> REQUEST FOR ORAL HEARING BEFORE THE PATENT TRIAL AND APPEAL BOARD
RESEARCH PATH: Intellectual Property & Technology > Patents > Patent Prosecution > Forms