Examiner Interviews Best Practices

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23,503 hours in FY 2013, compared with 21,273 hours in FY 2012. 6,651 interview hours in FY 13 have been charged through the AFCP program.

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October November December January February March April May June July August September

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20 08 20 09 20 10 20 11 20 12 20 13

Interview TimeFY 2008 – FY 2013

In-pro

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In-pro

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Allowan

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Allowan

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Rate with

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w90%91%92%93%94%95%96%97%98%99%

100%

95.1%

93.3%

97.4%96.3%

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12/3/12

Influence of Interviews on Compliance Rate

Based on random samples of over 28,000 Allowances and Final Rejections from FY 2008 – FY 2012

• Useful content of a detailed Agenda may include: General intent and/or goal of interview Brief summary of arguments (if applicable) Applied references Evidence relied upon Proposed amendments

• Not submitting an agenda is not a valid reason to deny an interview

• Review the application history including the prior art

• Understand the inventive concept

• Identify allowable subject matter where appropriate

• Be prepared to explain position of previous action

Interview Preparation

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Recordation of Interviews• Use the appropriate Interview Summary form and fill out completely

• Attach agenda and any items (including proposed amendments) provided for the interview

• Be specifics regarding issues discussed

• Clearly document all agreements

• Agreement can be reached for various issues, such as allowability, interpretation of claim limitations, priority dates, application of case law, next steps to be taken, statutory subject matter, etc.

• Make sure the record is complete

Next Steps

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• Clarify Agreements Record Specific Issues Resolved Note Any Interpretations Agreed Upon Identify Allowable Subject Matter, if any Record Specific Claim Language Specify What Prior Art is Overcome

• Commit to Specific Steps & Assign responsibility Examiner steps, for example:

- Consult with Subject Matter Expert- Perform Update Search

Applicant steps, for example:- Consult with Applicant- File Response

• Provide Clear Timeline & Follow-Up

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Interview Webpage

• Telephonic interviewso in 2011, 164 cases interviewed, both first and final

OAs 27% cases had next action allowances

• In-person interviewso 20 cases interviewed in person over a 4 day period

5 allowances 1 abandoned 1 notice of appeal 6 RCEs 4 new office actions 3 awaiting next action

Interview Statistics

Faster resolution of issues, allowance of applications

Improved patent quality ◦ USPTO recently analyzed correlation between

patent quality and whether an interview was conducted

◦ “The data shows that interviews help decrease both improper allowances and improper rejections by approximately 40 percent compared to applications without interviews prior to the final disposition.”

Benefits of Examiner Interviews

Director Kappos’ Public Blog, January 15, 2013

Discuss possible ways of overcoming rejections without creating extensive file history that can be exploited during litigation◦ Find out if the examiner thinks there is

allowable subject matter◦ Find out if the examiner has problems that have

not been stated in the written record and that can be easily addressed

Benefits of Examiner Interviews

Introduce the examiner to the inventor(s)◦ Many examiners have science and engineering

backgrounds, and may appreciate discussing the technology with an inventor and feel more personally connected to the case after meeting him or her

◦ The inventor is likely in a better position to explain the nuances of the technology

Benefits of Examiner Interviews

Develop a rapport with the examiner◦ Establish credibility and trust◦ Get more assistance during prosecution◦ You may have many other applications with the

same examiner

Benefits of Examiner Interviews

Understand the psychology and perspective of examiners in general◦ Examiners are just doing their jobs – don’t make

it personal Always be professional and courteous

◦ Some examiners feel underpaid and underappreciated A little bit of respect can go a long way

Strategies for Successful Interviews

Understand the psychology and perspective of examiners in general◦ Many examiners are not attorneys

They generally do not view the examination process as adversarial, so don’t treat it that way

Unless there are glaring legal errors in the rejections, it may be better to focus the arguments on the technology, e.g., explain distinctions from the prior art

It is more effective to cite legal principles from the M.P.E.P. rather than case law

Strategies for Successful Interviews

Understand the psychology and perspective of examiners in general◦ Examiners work under significant time constraints

Don’t expect as much time investment by the examiner after FAOM, and especially after-final

Interview after FAOM, not after-final Propose solutions that will make their jobs easier,

e.g., narrowing amendments, CONS

Strategies for Successful Interviews

Understand the psychology and perspective of examiners in general◦ Examiners work under significant time

constraints Don’t pile on weak arguments – annoying for the

examiner, and makes it easier for the examiner to focus on the weakest arguments

Strategies for Successful Interviews

Understand the particular examiner on your application ◦ Is the examiner new and still learning?◦ Has the examiner made an honest mistake?◦ Is the examiner just being unreasonable?

Strategies for Successful Interviews

Thorough preparation is essential◦ Don’t waste valuable time during the interview◦ Must have complete knowledge of the file

history, cited references, and relevant law◦ Think through all possible

arguments/counterarguments

Strategies for Successful Interviews

Thorough preparation is essential◦ Mock interviews can be useful to explore how

different arguments may play out, and identify potential weaknesses

◦ Have multiple fallback positions and possible claim amendments ready so that you can respond to whatever course the interview takes

Strategies for Successful Interviews

Listen to the examiner, ask questions, and create a dialogue◦ Don’t just lecture

Bring an inventor◦ Often useful to help explain the technology and

establish a rapport◦ But generally not a good idea to allow the

inventor to discuss the legal issues, unless he or she is qualified

Strategies for Successful Interviews

Preparing an agenda◦ Provide the examiner with enough information

to be prepared to cover all the issues you want to

◦ But don’t provide too many details, so that you have some flexibility in the interview, and in case the agenda is made part of the official record

Timing of the interview◦ After FAOM◦ A few weeks out from end of a quarter, but not

end of quarter

Strategies for Successful Interviews

Questions?