While examiners often request practitioners submit proposed amendments and/or proposed topics of discussion prior to an interview, we recommend practitioners be cautious as to material submitted. Applicants do not want materials on the record that could be misconstrued at some later point in time.
The preferred way to inform the examiner about topics to be discussed during an interview is by way of a telephone call in advance of the interview. Practitioners may also consider generally proposing ideas for amendments during such a call, without identifying the specific wording. For example, the practitioner may state, “I may be willing to consider amending the pusher member of claim 1 to include the gauge feature discussed in paragraph 43.”
If the examiner requires interview topics to be discussed be submitted in writing, a simple, bullet-point outline including a general description of the topics for discussion may be sufficient for the examiner. We have not found that examiners require specific positions be included in such an outline, and we recommend practitioners avoid including specific positions if possible. It may be helpful, however, to direct the examiner to particular areas of the prior art to review before the interview so the interview can be spent discussing the topics rather than reading the references.
With respect to proposed amendments, practitioners should evaluate whether to submit the amendments based on the particular situation. While in some instances it may be easy to discuss the proposed amendments orally during the interview, in other instances it may be advantageous to submit written amendments prior to the interview. For example, if the amendments are not particularly substantive, such as to address a 35 U.S.C. §112 issue, there may be no foreseeable harm to having them on the record. Alternatively, if the amendments are substantial but likely necessary, it may be useful to submit them prior to the interview because trying to discuss the proposed amendments without having a written reference may be neither effective nor efficient. However, as with any document that will be made of record, we recommend that before submitting such amendments, practitioners consider how the proposed amendments may look to an adverse party in the future if the proposed amendments are not formally entered.
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.
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