IP Law Bulletin

A patent applicant can request an examiner interview during most stages of patent prosecution, which allows the applicant to have patentability discussions with the U.S. Patent and Trademark Office (USPTO) examiner reviewing the applicant’s pending application. Examiner interviews can be conducted in person, or more commonly, over the telephone. Patent applicants have long been able to request an interview with an examiner, but in recent years, examiner interviews seem to be gaining in popularity. This is likely due, at least in part, to Director Kappos’ “Compact Prosecution” initiative that encourages examiners to conduct interviews.

Examiner interviews are not always guaranteed unless the applicant requests participation in the First Action Interview (FAI) Pilot Program prior to receiving a first Office Action on the merits. At present, the FAI Pilot Program is available through November 16, 2012, though it may be extended beyond that date. The FAI Pilot Program is beyond the scope of the current article, but more information about the Program is available in the September 2011 issue of Nutter’s IP Bulletin and at the USPTO’s website.

The following is a brief overview of strategies and techniques that can be employed to help get the most out of an examiner interview.

Before the Interview

• Requesting an interview: Interviews can be requested in a variety of ways, including filing a formal request with the USPTO, but the best way to request an interview is to call the examiner. It is best to call at least one month before the response is due to account for potential delays in scheduling the interview. For example, new examiners typically need to have their supervisor on the call, so if the interview will be with a new examiner, it can take more time to find a date that works with everyone’s schedules. Also, examiners are usually less available at the end of each fiscal quarter, so interview requests should be made well in advance for responses due during those time periods. 
   
• The interview agenda: Most examiners will ask the applicant to submit an agenda by fax or email in advance of the interview to summarize issues for discussion. Even if an examiner does not make such a request, it can be advantageous to provide some pre-interview guidance to the examiner about the focus of your arguments, relevant portions of the prior art references, and/or potential claim amendments so that the examiner can adequately prepare for the interview and the parties can hopefully reach agreement during the interview. When examiners are asked to consider arguments or amendments for the first time on the spot, they can be less willing to reach agreement during the interview. However, it is important to remember that the agenda could, at the examiner’s discretion, be added to the application’s official file wrapper. Applicants should therefore avoid making statements in the agenda that could create unwanted prosecution history estoppel if the agenda is placed in the file wrapper. Instead, include only brief arguments that identify the relevant claim language and the portions of the reference that show why the rejection is deficient. Proposed claim amendments can be included in the agenda in addition to or instead of written arguments. It is usually a good idea to only include arguments and/or amendments for the independent claims to help focus the discussion. Finally, be strategic with the contents of the agenda. If you think the pending claims distinguish over the cited art, but you also have ideas for amendments, you may not want to include the amendments in the agenda, as the examiner may be less open to arguments when faced with a willingness to amend.

During the Interview

• Beginning of the interview: Only inventors and registered patent practitioners can participate in an interview. It goes without saying that it is important to be courteous and professional during the interview. Hopefully the examiner has had a chance to review any submitted agenda, so the interview can begin by asking the examiner for any comments or questions on the agenda. It can also be helpful to provide a bit of background to the examiner about the particular application. For instance, it may be useful to explain to the examiner the problems or deficiencies the inventors were trying to solve that led to the invention, or, if the current application relates to an existing product, explaining the benefits of the product and how those benefits are covered by the scope of the claims can be useful. 
   
• During the interview: In discussing why the claims distinguish over the cited art, it can be helpful to explain the invention, summarize the prior art, and highlight the differences between the prior art and the relevant claim language. Also, it can be productive to identify what the applicant and the examiner agree on and to present arguments in the form of a question – “do you agree that . . . .” It can also be productive to ask the examiner for any claim amendment suggestions, and to ask what features of the invention, if any, appear to be novel from the examiner’s review of the application. It may be helpful to include any such feature in one or more amended or new claims for further search and consideration by the examiner. It is also important to keep the examiner honest—ask the examiner to point to the prior art for reasons to add claim limitations, i.e., just because the examiner “feels the claim is too broad” is not an adequate reason to reject a claim. 
   
• Wrapping up the interview: At the end of the interview, be sure to confirm any agreement with the examiner and ask if the agreement can be noted in the applicant’s written office action response. The benefit of being able to say in writing after the interview that agreement was reached during the interview is that written arguments need not necessarily be provided for why the claims overcome the rejections, which saves time, saves money, and reduces prosecution history. Also, ask if the examiner would be willing to contact the applicant (i.e., the applicant’s representative) if the examiner identifies any allowable subject matter and/or locates additional prior art in an updated search following the interview and the applicant’s written response so that prosecution can move forward without going through another round of office action and response.

After the Interview

• Applicant interview summary: Applicants must provide a summary of the interview on the record. A standalone interview summary paper can be filed with the USPTO, or an interview summary can be included in the office action response filed after the interview. No formal requirements exist for the contents or format of the interview summary, other than accurately summarizing the interview. An interview summary can thank the examiner for conducting the interview, give the date of the interview, list the names of the people that participated in the interview, identify whether the interview was in person or telephonic, indicate whether agreement was reached on any of the claims and/or pending rejections, note any potentially allowable subject matter identified by the examiner in the interview, and indicate whether the examiner agreed to contact the applicant after the interview to advance prosecution.  
   
• Examiner interview summary: The examiner is also required to provide a summary of the interview on the record. Be sure to review the interview summary that the examiner posts to the file wrapper to ensure that it is accurate. If there are any inaccuracies, the applicant can contact the examiner to discuss the discrepancies and ask for a corrected interview summary, or the applicant can file comments with the USPTO to address any inaccuracies in the examiner’s interview summary.

Examiner interviews can be an effective tool during U.S. patent prosecution, and these tips and techniques can help you get the most out of your examiner interviews.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.