Interviewing Patent Examiners - Advantageous or Disastrous?

Interviews with patent examiners concerning pending patent applications can be an efficient and economical means for advancing prosecution of applications. It can also be a disastrous experience for a patent practitioner or inventor who is unprepared, impulsive, or makes potentially damaging admissions or decisions during the interview. This article will provide the basics for interviewing patent examiners, advantages, and certain points that should be observed by the practitioner when scheduling and conducting a successful interview to avoid disasters.

Interviews are regulated by Rule 1.133, which provides as follows:

s. 1.133 Interviews.

(a)(1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Commissioner.

(2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application.

(3) The examiner may require that an interview be scheduled in advance.

(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in s.s. 1.111 and 1.135.

Why Interview?

Interviews are often helpful when a dialogue appears to be a more efficient way of handling issues rather than written communication. For example, in overcoming repeated rejections by an examiner when it is believed that the examiner doesn't understand the issues, an oral interview allows the patent applicant to involve an Examiner's more experienced supervisor. There are also situations when practitioners believe that the examiner is not giving serious consideration or paying proper attention to the arguments submitted. Often the personal contact afforded by an interview gives the practitioner an opportunity to diffuse any adversarial stance that might have developed on either side as a result of the impersonal nature of written communications. Former Patent Examiner, and present BDSM Partner, Claude A.S. Hamrick "Cash", states that, "In my experience I have found that during an interview, the Examiner is more likely to engage in constructive communication, as opposed to judicial disposition, and the practitioner is more likely to be appreciative, and perhaps even understanding, of the Examiner's position and argument. As a consequence, the resulting "meeting of the minds" between the parties tends to advance the prosecution rather than prolong it."

Additionally, an interview can facilitate a more efficient dialogue in handling issues that are more complex and involve applying legal standards of patentability such as, for example, whether the disclosure was enabling (i.e., one that would permit one skilled in the art to practice the invention without having to engage in undue experimentation) or whether the claims would have been obvious to one skilled in the art over prior art. In this example, there are mixed issues of law and technology, and the practitioner can often be quite helpful to an examiner. It may be that the practitioner does not fully understand the reasons for the Examiner's rejections or the logic being used by the Examiner. Thus, having a face-to-face discussion with the Examiner is likely to be more productive than written communication. However, the importance of the written record must always be kept in mind, and it is incumbent on the practitioner to insure that important comments and distinctions over prior art get inserted into the file wrapper. One should never conclude an interview without reaching an agreement with the Examiner as to what his summary of the interview is going to reflect.

Another possible reason to argue the merits of a patent application orally rather than in writing is to avoid placing statements in the record that can be used against a patentee years later - prosecution history estoppel. Under the Federal Circuit case Festo, an applicant's written response to an Office Action may contain statements that can be used by an accused patent infringer or by a potential licensee to devalue a patent or narrow the scope of the claims. Although the USPTO rules require patent applicants to provide a written record of an interview to be placed into the application file, statements in such written records are much more limited than those that may be submitted in a written response to an Office Action.

There are instances where having the inventor(s) participate in the interview will increase the impression of the Examiner. For instance, an enthusiastic inventor, or the inventors' description of the problems faced during developing the invention, may help sway the Examiner. In cases where the inventor(s) accompanies the practitioner, it is important that the inventor is adequately prepared. An inventor who either does not understand the proceedings or who uses language loosely may do damage to their case. Damaging comments may be incorporated into the interview summary prepared by the Examiner, and affect the strength and enforceability of a patent. Cash further added, "It should be made quite clear to the inventor, before the interview, that his role is to assist the Examiner in understanding his invention, and perhaps in distinguishing his invention from the prior art, and that all legal and procedural comment should be left solely to the practitioner. Furthermore, he should be instructed to avoid any impulse to be argumentative, as such expressions almost always result in further polarization of the Examiner's position."

Points To Consider

One important point that should be observed is that the practitioner should provide to the Examiner a draft copy of the Office Action response, as well as any proposed amendments to the claims, prior to the interview. This gives the Examiner an opportunity to study the response and any proposed amendments so that the focus of the interview is on substantive issues. According to BDSM partner, Laurie Axford, "It's amazing how many times draft responses remain in the record. So, I always label it "DRAFT", and correct the draft when the interview is concluded."

Another point that should be observed by the practitioner is that he or she should be fully prepared to discuss all issues raised in the pending Office Action, and should be thoroughly familiar with the application as a whole. If the person requesting an interview is not prepared, the examiner is authorized to immediately terminate the interview.

An interview also provides an opportunity to provide working models of the product, which may impress the Examiner with the merits or effectiveness of the invention, or the problems solved by the invention. Using such presentations are sometimes more persuasive than the legal arguments. Consider bringing the following:

Models

Drawings

Charts

Graphs

Photographs

Videotapes

Following the interview, it is a requirement of the Patent Office that the Applicant prepare an Interview Summary, in addition to the Examiner's Interview Summary. A good practice is to assist the Examiner in writing the summary as the meeting closes, so that you are aware of exactly what will be written in the record. Both interview summaries are part of the record of the application.

In summary, while there is no requirement to conduct an interview with the Examiner, interviews can be a powerful tool in advancing prosecution. It will likely serve as a means for promptly obtaining allowance of an application or, at a minimum, a means for clarifying the issues involved. The content of this article is intended to provide a general guide

to the subject matter. Specialist advice should be sought about your

specific circumstances.

[c]2004, Burns, Doane, Swecker & Mathis, L.L.P.

Ms Susan Lynch

Burns, Doane, Swecker & Mathis L.L.P.

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