Practical Guidance at Lexis Practice Advisor

Patent Examiner Interviews
March 23, 2018

Practical guidance at Lexis Practice Advisor®


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 often can be helpful to conduct an interview with the examiner in an attempt to advance the prosecution of the application towards allowance. This practice note 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 Patent Office 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, also may include the patent applicant/inventor, and one or more supervisory examiners as well. 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.

For a general overview of the Patent Examination Process, see Utility Patent Application Examination Process.

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 Patent Office 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 First Action Interview Pilot program below.

See also https://www.uspto.gov/patent/initiatives/accelerated-examination for more information about 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 are in 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 (i.e., an applicant who is representing himself/herself) 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. See After Final Consideration Pilot (AFCP) 2.0 below. (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, his/her 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 also 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 versus written 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 Patent Office 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-sight 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 Patent Office campus where the examiner is located. The Patent Office 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 Patent Office has regional offices in San Jose, California; Denver, Colorado; Detroit, Michigan; and Dallas, Texas.
Some examiners work remotely and thus an in-person interview with them may not be possible. In such cases, the Patent Office 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 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. § 102 and 35 U.S.C. § 103 for lack of novelty and nonobviousness, respectively
  • The rejection under 35 U.S.C. § 101 for unpatentable subject matter
  • The rejections under 35 U.S.C. § 112(a), (b) –or–
  • 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 inventor(s), 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 will be 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/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 interviewis 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 (e.g., this may include a copy of amendments that were agreed to) (Note: Agreements as to allowability are tentative and do not restrict further substantive action by the examiner to the contrary.)
  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 an Examiner Interview Summary Form, PTOL-413, is entered. Regarding the general thrust of the arguments (item 5), 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. See Statement of Substance of Examiner Interview.

An applicant must also submit an Interview Summary except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form (PTOL-413B) that the examiner will provide a written summary. If an Interview Summary by the applicant is not submitted 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 out to it 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.

For an example of an Interview Summary, see Statement of Substance of Examiner Interview.

USPTO Programs that Affect Examiner Interview Practice

After Final Consideration Pilot (AFCP) 2.0

This pilot program “is part of the USPTO’s on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders” and “is designed to enhance communication between the Office and applicant.” See After Final Consideration Pilot 2.0

Essentially, the AFCP 2.0 pilot program provides additional time for an examiner to consider an amendment submitted after a final office action. If the amendment does not place the application in condition for allowance, the AFCP 2.0 program requires that the examiner use the additional time to schedule and conduct an interview with a patent applicant. The AFCP
2.0 pilot has been extended to until September 30, 2018.

The AFCP 2.0 pilot program has been very popular and many registered practitioners have found this program to be helpful because it provides the examiner with additional time to consider a claim amendment made after a final office action, which can (1) avoid the need to file a Request for Continued Examination (RCE) (and hence the costs and delays associated with filing an RCE), and (2) it can help advance a patent application to allowance. For example, even if the examiner is not persuaded by a claim amendment made in a response to a final office action, an applicant can benefit from the examiner’s feedback during the interview held in accordance with the AFCP 2.0 program. In some cases, negotiation with the examiner may take place during the interview, which may result in the allowance of the application.

In order to participate in the AFCP 2.0 pilot program, the following requirements must be satisfied:

  • There is an outstanding final office action.
  • A response is submitted with the request to participate in the AFCP 2.0 pilot program, and the response includes an amendment to at least one independent claim that does not broaden the scope of the independent claim.
  • The request for consideration under AFCP 2.0 pilot program is the only AFCP 2.0 request filed in response to the outstanding final rejection.
  • The applicant is willing and available to participate in any interview requested by examiner.
  • There are no fees unique to an AFCP 2.0 request, however, any fees concerning the response after final rejection (e.g., extension of time fees) must be paid concurrently with the request for AFCP 2.0 and the filing of the response.
  • The request is filed electronically using the PTO’s electronic filing system (EFS-Web)
  • Reissue applications and reexamination proceedings are not eligible for participation in AFCP 2.0 pilot program.

After the response and request for participation in the AFCP 2.0 pilot program are filed, the examiner will review the response to determine if additional search and/or consideration is (1) necessitated by the amendment and (2) could be completed within the time allowed under AFCP 2.0. If additional search and/or consideration is required, but cannot be completed within the allowed time, the examiner will consider the response in accordance with standard practice after a final office action.

If the examiner determines that the amendment does not necessitate additional search and/or consideration, or if the examiner determines that additional search and/or consideration is required and could be completed within the allowed time, the examiner will consider whether the amendment places the application in condition for allowance (after completing the additional search and/ or consideration).

If the examiner determines that the amendment does not place the application in condition for allowance, the examiner will contact the applicant and request an interview. If the interview is declined, then the examiner will consider the response in accordance with standard practice after a final office action.

First Action Interview Pilot

Under this program, a patent applicant can conduct an interview with an examiner before the examiner issues a first office action, but after filing the patent application. The First Action Interview Pilot Program is open to all technology areas and application filing dates. There are no additional fees required for participation in this pilot program. In order to participate in this program, a patent applicant must satisfy the following requirements:

  • The application must contain three or fewer independent claims and twenty or fewer total claims. The application may not contain any multiple dependent claims.
  • The request must be filed electronically using the Office’s electronic filing system, EFS-Web
  • The request must be filed at least one day before a first office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system.
  • The claims must be directed to a single invention. If the examiner determines that the claims are directed to multiple inventions (e.g., in a restriction requirement), the applicant must make an election without traverse.
  • The patent applicant must agree not to file a request for a refund of the search fee and any excess claims fees paid in the application after the mailing or notification of the Pre-Interview Communication.

The First Action Interview Pilot is not a popular program; statistics show that only approximately 0.16% of applicants are using it. See IP Watchdog - More Applicants Should Use the First Action Interview Program . However, the program may be beneficial in some cases because it allows an applicant to speak with an examiner before the examiner completes a formal office action, and thus this program may allow an applicant to influence the examiner’s interpretation of the claimed invention and the prior art before the examiner has issued a substantive action. The program also can be beneficial to enable the applicant to learn about the examiner’s interpretations such that, even if the application is not allowed in the first action, the applicant may gain sufficient knowledge to be able to amend the claims in a manner that may satisfy the examiner to allow the application in a next action.
 

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