Now that you have an Examiner’s interview scheduled, prepare to maximize the opportunity.

Adequate preparation before an interview cannot be over emphasized. The Practitioner should understand the issues and be ready with a range of reasonably foreseeable proposals to overcome the issues. Interview time is limited for both parties – typically 20 to 30 minutes – so every moment counts. An interview agenda, if forwarded to the Examiner at least 24 hours in advance, can facilitate a focused discussion and an efficient use of time. The agenda may include information about references, claims, or applied rejections the Practitioner wishes to discuss, as well as any proposed amendments or evidence the Practitioner wishes to provide. However, any written communication with the Examiner, including the agenda and proposed amendments, becomes part of the official file history.

That said, regardless of how well you have prepared and how passionately you believe in the validity of your requests, it is critical to listen attentively and understand the Examiner's concerns. If you do not fully absorb the Examiner’s position, you will miss critical cues on what might be the key persuasive points that can lead to the outcome you are seeking.

During the interview, consider first summarizing your understanding of the Examiner's position, and then establish why you disagree or wish to propose a solution. The Practitioner can clarify concepts using exhibits and visuals (provide as much as possible to the Examiner in advance), listen closely to how the Examiner responds to the presentation, and then reply with answers to questions raised or clarifications as needed. In certain instances, it may be helpful to have the inventors participate, as they may provide clarity regarding technical features, contextualize the importance of a discovery, discuss what was known in the art, and explain the unexpectedness of the result. With appropriate background, both the Examiner and Practitioner are better positioned to discuss steps that might overcome the issues, such as suitable claim amendments or additional evidence. Prepare acceptable claim amendments to propose to the Examiner, and do not hesitate to ask the Examiner for guidance on claim amendments and evidence to support argument (articles, declarations, etc).

 

Follow-Up Requirements

Whether or not an agreement with the Examiner is reached in the interview, the Practitioner is obligated to record the substance of the interview in each case unless the interview was initiated by the Examiner and the Examiner clearly indicated that he or she will provide a written summary on the “Examiner Initiated Interview Summary” form (PTOL-413B). This requirement can be satisfied by submitting a complete written statement about the substance of the discussion around the merits of an application. If certain agreements were reached during the interview, a response containing any proposed claim amendments should follow. If the interview reveals no possibility of an amendment advancing progress in the prosecution, the Applicant may still benefit from useful information gleaned from the conversation. This might include determining the next steps, and what substantive points should be addressed in a subsequent response. For example: how to amend the claims or select evidence to submit with the filing of a Request for Continued Examination (for an after final interview), that would better position the claims for allowance A.

If you approach the interview with a collaborative disposition, prepare thoroughly, and listen carefully the Applicant will increase their odds of securing a desirable outcome. Alternatively, the interview may reveal that the Applicant cannot achieve the desired claim scope via prosecution before the Examiner and must proceed with having the outstanding rejections reviewed by filing an appeal with the Patent Trial and Appeal Board (PTAB).

Sources:

• MPEP 713;
• USPTO Interview Practice;
• Adriana Burgy, “Examining the Examiner Interview”, Prosecution First Blog; and
• “Why conduct patent Examiner interviews?” Patent Trademark Blog, IP Q&A.