USPTO Interview Practice from an Examiner’s Perspective

By: Michael A. Leonard II

Overview

Many Applicants recognize that Examiner Interviews can be an effective tool to advance prosecution of an application. However, some Applicants approach the Interview in a way that annoys and frustrates the Examiner. For instance, Applicants may provide insufficient information about the topics to be discussed or be inadequately prepared for the Interview. Accordingly, it is helpful for Applicants to consider the Interview process from the perspective of Examiners and the USPTO. In order to help Applicants understand some concerns from an Examiner’s point of view, we asked a friend at the USPTO to provide us with good and bad practices that he comes across while conducting Interviews. His comments are quoted below and his name remains anonymous, per his request. Later, we also provide the USPTO's position regarding Examiner Interviews.

NOT HELPFUL - Applicants who Schedule an Interview when the Interview will not be Beneficial

While Interviews can be an effective tool for advancing prosecution, there are situations when an Interview is likely to be ineffective.

Applicants Merely Restate Previous Arguments: “An interview to restate the previous arguments, and pretending that I haven't already addressed all of them in the last office action. We get together to basically read our previous actions to each other.” Adding further arguments that were not presented in the previous Response, perhaps with inventor comments, may be fruitful. However, merely restating what was already said is unlikely to be productive, especially when doing so comes across as inferring that the Examiner did not understand or care to read the previous Response. Applicants should preferably have at least one fallback position if the Examiner does not agree with primary arguments.

Applicants Propose Sweeping New Amendments: “To propose a huge new amendment that I could have never seen coming (not just incorporating dependent claims, but substantial new limitations) that I don't see till the interview. Not much I can do. I can say I didn't address [the new amendment] in the last office action (since it wasn't claimed) and that is it. I can't give any real thoughts on it, because I need to consider what the references of record might have to say about that, and I have to do a new search. The exact same result could be reached by just filing the amendment, this interview typically adds nothing” (emphasis added). It is unrealistic to expect Examiners to give full, on-the-spot consideration of such amendments. If new amendments are to be proposed, they should be presented to the Examiner before the Interview as an attachment to Form PTOL 413A.

NOT HELPFUL - Applicants who Provide Inadequate Information to Allow the Examiner to Adequately Prepare

Avoiding prosecution history estoppel is certainly positive when possible, but conducting an Examiner Interview requires some disclosure on the record in order for the Interview to be fruitful.

Nothing Provided on the Record: “Not wanting anything to go on the record. [Some Applicants will not] send in anything before the interview (proposed amendment or what you plan to talk about) which really hurts the interview. If I know what the interview is about I can prepare for it and have time to think about it and give a response beyond ‘I'll have to take a look at that once you file it’”.

Newly Presented Ideas not Included in PTOL 413A: “Expecting me to fully consider some idea you just came up with, do a search on it, and go on the record saying your new idea is allowable. You don't get a full response (you certainly don't get a search) for an interview. I get 1 hour of time for the interview, that isn't enough time for all that, and you shouldn't expect me to spend much more than that hour. It doesn't help that you are willing to call me back later so I have time to look at. If you want a full official response from me, you need to file a full response. Since I don't have time to do everything I need to for a response, don't expect me to tell you something is allowable, I don't have time to look through the art and perform a new search if needed, so I can't say that. The best response you should hope for is ‘this appears to overcome the rejection as it currently stands’. I don't know what else is out there, including in the applied refs, so that is the best I can do.”

NOT HELPFUL - Presenting Technically or Legally Incorrect Arguments

If Applicant comes into an Interview and presents legally or technically incorrect arguments, it is not surprising that this is likely to frustrate the Examiner.

Accept the MPEP on its Face since Examiners Generally Must do so: “If my SPE and I are sitting there reading you word for word a section from the current MPEP you do not need time to look [into whether] that is good law or not.” Naturally, an exception to this would be a new case that has changed the law since the last revision of the MPEP, such as whatever comes out of the Supreme Court in Bilski, but such cases are quite rare.

Search the Entire Reference: “If you are going to argue a ref doesn't teach something (or teaches away from something) you should read the whole ref. You are going to look silly when [a reference teaches what you claim it does not and] I defeat your argument by having to go only a few paragraphs ahead.” These types of scenarios can not only damage the credibility of future or alternative arguments, but they can also deteriorate what should be a more collaborative relationship between Applicants and the Examiner. At a minimum, performing a word search for key terms in your argument is helpful.

NOT HELPFUL - Fishing Expedition

Applicants should not simply come into the Interview and expect the Examiner to do all the work and propose allowable amendments.

Applicant is Completely Unprepared: “If at some point (usually toward the end, but might be able to be pulled off early) you want to ask if there was something that stuck out to me as unique and I thought might be allowable that is ok (but don't expect much). But don't come in like you have no idea what you are doing asking me what I would do or how to change the claims to make them allowable. Not my job.” Again, Applicants should be prepared for the Interview, have primary and backup arguments, and attempt to provide arguments and/or amendments that are believed to overcome the art. Placing this burden entirely on the Examiner is unfair and unproductive.

BENEFICIAL - Positive Interview Practices

While the above practices should be avoided, the following are generally helpful.

Establish Evidence Needed to Make Case: “I think the most productive interviews are a discussion of what type and amount of evidence would be needed for an argument. If an argument of unexpected results, for example, is being made there are rules for what type of evidence needs to be provided, how much evidence (needs to be commensurate in scope with the claims). Helps to talk about how much I would expect since there is no bright line rule on that, and what is needed will change from case to case or examiner to examiner. This interview helps avoid declarations that aren't good enough (and a final rejection, and a new dec not being entered after final, and a RCE, etc).”

Flushing out Complex Arguments: “If there is an argument that is hard to put on paper, it can help to talk it out first, but it will still have to be written down. It has to go in to the record, but a discussion can help figure out some ways to say it that will be clear and persuasive.”

The USPTO’s Position on Examiner Interviews

While Interviews may be counterproductive when conducted improperly, many Examiners recognize the value thereof for advancing prosecution when well-presented. It should be noted that the USPTO also recognizes this fact. In training materials for Examiners, the USPTO stresses that Examiner Interviews are an “effective examination tool” (to view the training materials, click Here). The USPTO encourages Examiners to take advantage of Interviews to realize the following benefits:

(1) Interviews are an opportunity to explain rejections, discuss prior art, clarify positions, and resolve issues;

(2) Interviews can lead to a better understanding of Applicant’s invention;

(3) Interviews can bridge the knowledge gap between the Examiner and the Applicant and lead to better understanding of each other’s position;

(4) Interviews are an effective method for reaching agreement and advancing prosecution; and

(5) Interviews promote compact prosecution.

The USPTO also notes that “Interviews can be useful at any stage of the prosecution of an application.” The Office’s positive view towards Examiner Interviews should further encourage Applicants and counsel to consider them as a tool for facilitating understanding and advancing prosecution. Accordingly, when Applicants prepare for and conduct Examiner Interviews, it is useful to keep in mind the Examiner’s perspective.

Keys to Effective Interviews

The USPTO stresses three “keys” to effective Interviews from the Examiner’s perspective: (1) preparation; (2) cooperation; and (3) communication.

Preparation: Examiners are encouraged to ask for an agenda to outline the purpose and intent of the Interview (Form PTOL 413A). To assist the Examiner, Applicants should try to provide a clear outline of the issues to be discussed while being wary of creating unnecessary prosecution history estoppel since Form PTOL 413A will find its way into the record. Examiners are also encouraged to thoroughly review the record, look for opportunities to resolve the identified issues and to consult with a Supervisory Patent Examiner (SPE) or Primary Examiner to discuss relevant issues. Applicants should be careful to adequately point out the issues to be discussed during the Interview so the Examiner has an opportunity to focus his or her preparation appropriately. After all, Examiners only receive an half hour of “other time” for preparation for Examiner Interviews and directing an Examiner’s focus will help this time to be more productive.

Cooperation: Examiners are encouraged to have an open mind and try to understand Applicant’s position before drawing conclusions. Examiners are also encouraged to look for areas of agreement and to attempt to work with Applicants to advance prosecution. On the other side of the coin, while Applicants should at least prepare a primary and backup position for an Interview, Applicants should also be receptive to proposals made by the Examiner that may be beneficial.

Communication: Examiners are instructed to clearly state the Office’s position, to use appropriate tone and volume of voice, to be respectful and to act in a professional manner. Naturally, attorneys should conduct themselves in a similarly cordial manner.

Potential Interview Topics

Some of the issues that the USPTO believes to be beneficial to address during an Examiner Interview include:

• Nature of the invention and state of the art;
• Claim interpretation and scope;
• Statutory subject matter;
• Cited art;
• Rejections and objections; and
• Proposed amendments.

Conclusion

When preparing for Examiner Interviews, Applicants should consider the Interview process from the Examiner’s perspective. Applicants should be careful to provide the Examiner with sufficient information such that he or she can adequately prepare for the Interview and be ready to discuss the issues at hand. During the Interview, Applicants should provide a background of the invention and discuss how the claims distinguish over the cited art. Applicants should also have at least one fallback position that is acceptable to the client in case the Examiner does not agree with the primary line of reasoning. When conducted properly, Examiner Interviews can be an effective tool that benefits both Examiners and Applicants.