USPTO Examiner Interview Strategies:

Preparing for and Conducting Interviews

to Advance Patent Prosecution

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TUESDAY, MARCH 21, 2017

Presenting a live 90-minute webinar with interactive Q&A

Adriana L. Burgy, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Kenneth E. Horton, Shareholder, Kirton McConkie, Salt Lake City

Marvin Petry, Member, Stites & Harbison, Alexandria, Va.

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Overview

I. USPTO Policy on Interviews

II. Why You Should Conduct Interviews

III.Understanding USPTO System and Adapting the

Interview

IV.Best Practices

A. Preparation

B. Agenda

C. Presenting Amended Claims

4

USPTO Policies

I. Benefits of Interviews

II. Applicable Regulations & Guidelines

III.Selected Topics

I. Scheduling the Interview

II. First Action Interview (FFAI) Program

IV.Q&As

5

Benefits of Interviews

I. Facilitate a better understanding of the USPTO processes’, policies and procedures.

II. Advance examination of applications once taken up in turn.

III.Facilitate resolution of issues for timely disposition of an application

IV.Give Applicant more options in regards to the amount of notice and procedure needed.

V. Facilitate communications between the Office and the stakeholders.

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Interview Time (08-14)

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0

10,000

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230,000

Fiscal Year

Ho

urs

2008 2009 2010 2011 2012 2013 2014

Disposal Rate (08-15)

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12.0%

14.0%

16.0%

18.0%

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26.0%

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30.0%

32.0%

34.0%

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/01

Pe

rce

nt

% of Serial Disposals Having at Least 1 Interview

28.7% of Serial Disposals completed in January 2015 had at least one interview.

Interview Impact on Compliance Rate

9

Based on random samples of over 52,000 Allowances and Final Rejections from FY 2005 – FY 2014

Applicable Regulations

MPEP 713

713.01: Mechanics of Interviews

713.02: Interviews before 1OA

713.03: No “Fishing” Interviews

713.04: Substance of Interview made of record

713.05: Prohibited Interviews

713.08: Models & Exhibits

713.09: After-Final Interviews

713.10: Rule 312 Interviews

10

Applicable USPTO Guidelines

• Interview Practice Guidelines for Applicants: Clarifies policies,

procedures, and tools available to enable better communicate

with examiners:

https://www.uspto.gov/patents/law/ipractice/applcnt-int-

practice-guide.pdf

• Effective Interview Practice- Discusses substantive components

of interviews:

https://www.uspto.gov/sites/default/files/patents/law/ipractic

e/handout_2012.pdf

• Interview Best Practices- identifies best practices that can be

followed by Examiners and Applicants, including accessibility,

preparation, substance, and recordation tools and techniques:

https://www.uspto.gov/sites/default/files/patents/law/exam/i

nterview_best_practices.pdf

11

Examiner Training

Examiners receive annual training on various aspects of interview practice.

• Preparation, recording and clarification.

― Examiners are encouraged to provide a detailed recording of the

interview, whether or not an agreement with the examiner was

reached. See MPEP 713.04

― All documents provided to the examiner including the agenda will

be made of record in the application file.

― Applicants encouraged to provide a recording of the interview.

• Interview tools (e.g., WebEx)

• Promotion of interviews.

• Interview Practice Training Summary - Addresses why interviews are

important examination tool, identifies key components for an effective

interview, and discusses some frequently asked questions:

https://www.uspto.gov/sites/default/files/patents/law/exam/interview

_practice_training_summary.pdf

12

Selected Topics: Setting up the Interview

1. Electronic Scheduling: USPTO Automated Interview Request

(AIR) Form

https://www.uspto.gov/patent/uspto-automated-interview-

request-air-form.html

Tips:

--Easier to set up interview by email

--But information exchanged made of record

2. Schedule with Interview Request Form

3. Schedule by Phone

13

Selected Topics: FFAI Program

• Promote personal interviews prior to issuance of a first Office action on the merits

• Advance examination of applications once taken up in turn

• Facilitate resolution of issues for timely disposition of an application

• Give applicants more options in regards to the amount of notice and procedure needed

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FFAI Program: Requirements

1. Request to enter this expanded program must be made electronically.

2. Request must be filed at least one day before a first Office Action on the merits

being entered into PAIR. Tip file with initial application.

3. Application must contain—or be amended to contain—a maximum of 3

independent claims, 20 total claims, and no multiple dependent claims.

4. Claims must be directed to a single invention and not subject to a restriction

requirement.

5. NO fee is required (but right to request a pre-examination refund of fees is

waived).

6. Must be a non-reissue, non-provisional utility application under 35 USC 111(a)

or national stage application under 35 USC 371

15

FFAI Program: Procedure

1. Examiner conducts a search and issues a Pre-Interview Communication (PIC) that cites

relevant prior art and identifies proposed rejections or objections.

2. Applicant is given one month (extendable by 1 month) to (1) request not to have the

interview (2) submit Interview Request form (PTOL-413A) along with a proposed amendment

and/or arguments via EFS-Web, and conduct the interview within 60 days from the filing of

the Applicant Initiated Interview Request; or (3) Request not to have the interview AND submit

a reply in accordance with 37 CFR 1.111

3. Interview must occur within 2 months of the mailing date of the PIC.

4. Applicant must file proposed amendments or remarks that are responsive to the PIC for an

interview to be granted. Under certain conditions, these amendments and remarks may not

be entered in the record. See Exhibit C.

Tip Make Interview Short & Sweet & Focus Interview on

amendments/arguments.

filed second reply with supplemental amendments and/or

arguments before the Examiner issues another PIC.

16

FFAI Program: Procedure (cont’d)

5. If agreement is not reached during the interview, the Examiner will issue a First

Action Interview Office Action with a one month reply period (extendable by 1

month). See Exhibit D.

6. Applicant can file another reply, including additional amendments and

arguments. See Exhibit E.

Tip add additional claims back into the application

7. If agreement is not reached on all claims during the program, application is

inserted into normal examination route.

8. Limited Examiner comprehension of process—can be exploited

17

FFAI Program: Advantages

1. Advance prosecution of an application.

2. Enhanced interaction with Examiner.

3. Resolve patentability issues with Examiner at the beginning of prosecution.

4. Early allowance: my experience (with about 20 applications to date) has an

allowance rate of about 80-85%, some within a year of filing.

5. At conclusion of program, if there is no allowance, Applicant receives a normal

non-final Action on the merits (but probably months before you would have

otherwise received the non-final Office Action). The issues and interpretation of

the prior art have been clarified during the program, hopefully avoiding the need

to file an RCE (along with its accompanying cost and delay).

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FFAI Program: Disadvantages

1. Shortened reply period (1 month) for responding to the PIC.

Only 1 month extension.

Tip Docket Carefully!! Some (most?) docket

systems have not been modified for these

deadlines.

2. Limited Examiner comments regarding the prior art. The PIC

usually cites to the relevant portions of the prior art accompanied

with very little explanation about the Examiner’s interpretation of

that prior art.

19

FFAI Program:

1. Shortened reply period (1 month) for responding to the PIC.

Only 1 month extension.

Tip Docket Carefully!! Some (most?) docket

systems have not been modified for these

deadlines.

2. Limited Examiner comments regarding the prior art. The PIC

usually cites to the relevant portions of the prior art accompanied

with very little explanation about the Examiner’s interpretation of

that prior art.

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II. Why you should

conduct Interviews

21

Marvin Petry

Stites & Harbison

mpetry@stites.com

22

I. Overview

A. Speaker’s background

1. Strategy and psychology of the interview

B. Basics of successful interview

1. Know examiner’s priorities

2. Know attorney’s priorities

3. Know attorney – examiner relationship

23

C. Resources from PTO 1. Limited value – learn rules, procedures, protocol, etc. 2. Drafted by PTO personnel. Often in conflict with attorney’s best strategy, which drafters do not appreciate a. My advice will often conflict with PTO guidelines b. Example – examiner’s claim suggestions

24

II. Place Interview in Context

A. Prosecution as a whole –

1. Allowance

2. Determine what examiner is thinking

a. BRI – horse and cow example

b. Ask questions – factual bases, rationale for obviousness test

B. There should be no such thing as a bad interview

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III. When to Interview A. Formal interview

1. Anytime after first office action up to filing of appeal brief

2. Best time – before final rejection when can still freely amend without RCE

3. After final rejection

a. Best to avoid amendments

b. If must amend, treat it as if after a first office action, noting that the amendment assumes an RCE will be filed

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B. Short phone call - technically not an interview - ask specific questions or seek clarification

a. Anytime in entire prosecution b. How? Call cold, identifying case, ask if examiner has a few minutes and ask your specific questions c. Examples –

- Questions on first read of office action before reporting to client - Questions while preparing response -Follow-up after interview

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IV. Initiating the interview

A. Only by telephone

1. Quickest way to set a time

2. Gain valuable information about examiners

3. Start relationship with examiner

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V. Type of Interview

A. In person

B. Telephone

C. Web

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VI. Essential Aspects of Interview

A. Totally respectful, as if addressing a PTAB member or a judge

B. Follow protocol as to whether SPE included

C. Understand that examiner fully understands the claims and references, notwithstanding appearances to the contrary - Example, horse and cow

30

D. Focus, focus, focus – time and examiner’s attention span is limited

1. Discuss only one (broadest) claim and key references applied thereto

2. Be prepared with amendments to that claim only

3. Defer to response for other claims, formal objections, etc.

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A. Provide minimal information 1. Claim amendments (but not back-up amendments) 2. If Examiner requests more, respond generally, e.g.: - References to be discussed, - Will discuss legal issues, - Purpose is to ask examiner questions to better understand the rejection 3. Submissions will be attached to interview summary form

VII. Agenda

III. Understanding the USPTO

System and Adapting the Interview

to Accommodate That System

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Examiner Count System

• Count system

• The amount of time an examiner is expected to

complete a patent examination

• Different credit is given for different stages of

examination

• Balance Disposal (“BD”) – Average time it takes for

patent examiner from first action to a final disposal

• Production requirements

• Class

• Examiner’s GS level

• Complex technology areas are given more time for

examination

34

Examiner Count System

• What are “Counts”?

• Counts are points, that correlate to an

expected number of hours to examine an

application

• The PTO determines a number of hours per count for

each class and subclass of patent applications

― # of hours correlates to the complexity of the tech, and the

difficulty of the required search

― Hours per count are fixed for every application classified in

the class/subclass

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Examiner Count System

36

Examiner Count System

• Production is measured in 80 hour biweeks

• Number of counts required = 80 hrs / (hours per count)

Example: 10 hours / count for class/subclass 600/300,

Examiners must obtain 8 counts every biweek (80/10)

37

Examiner Count System

• Examining time can be reduced by “other time” and leave • Personal leave, sick leave, training time, interviews, appeal conferences,

restrictions, advisory actions

• Number of counts required = (80 hrs – other time) / (hours per count)

A. Example: 10 hours / count for class/subclass 600/300,

B. Examiner has 20 hours of other time for the biweek

C. Examiner must obtain 6 counts that biweek ((80-20)/10)

38

Examiner Count System

• Seniority affects count requirements

• A position factor based on the Examiner’s seniority multiplies the # of

counts required

• Number of counts required = ((80 hrs – other time) / (hours per count)) * position

factor

A. Example: 10 hours / count for class/subclass 600/300

B. GS14 Examiner (Primary Examiner) = 1.2 multiplier

C. Examiner has 20 hours of other time for the biweek

D. Must obtain 7.2 counts that biweek ((80-20)/10)*1.2

39

Examiner Count System

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Examiner Count System

• NFOA counts are highest

• Motivation to examine thoroughly, early

• NFOA counts diminish after RCE

• Motivation to allow applications earlier

0 RCEs 1 RCE 2+ RCEs

Non-Final OA 1.25 1.00 0.75

Final OA 0.25 0.25 0.25

RCE 0.5 0.5 0.5

Examiner’s Answer 0.5 0.5 0.5

Abandonment 0.5 0.5 0.5

Allowance 0.5 0.5 0.5

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Examiner Count System

• Reduces examining hours for the biweek

1. Restriction requirement (mailed): 1 hr

2. AFCP 2.0 Advisory Action: 3 hrs

3. Appeal conference: 1 hr

4. Interview: 1 hr

5. Training and Art Unit meetings: varies

6. Personal and sick leave: varies

7. Holidays: varies

8. Misc: classification, “catastrophic,” govt. closure

(except teleworkers)

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Examiner Count System

• Some tasks yield ZERO counts:

• Restriction Requirements

• 2nd+ Consecutive Non-final or Final OA

• Advisory Actions

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Examiner Count System

Class 42 (Fishing, Trapping, and Vermin Destroying)

16.6 hours per Production Unit (PU)

GS-14 examiner = 72 hours in biweek

GS-14: (72 x 1.35)/16.6 = 5.9 PU x 2 = 11.8 counts

BIWEEK EXAMINER COMPLETED:

6 final Office Actions = 6 x 0.25 counts = 1.5 counts

4 Allowances = 4 x 0.50 counts = 2.0 counts

6 first Office Actions = 6 x 1.25 counts = 7.5 counts

2 Advisory Actions = No Counts

1 non-final 2nd Office Action = No Counts

3 Abandonments = 3 x 0.50 counts = 1.5 counts

TOTAL = 12.5 Counts (6.25 PUs)

44

Examiner Count System

The Fiscal Year

Runs from October 1st to September 30th

Goals, bonuses, etc., calculated at that time

Timing Considerations:

Most PTO initiatives have goals for the year-end

Quality review of allowances significantly reduced in September to focus

on completing initiatives

Final counts are evaluated on October 1, but the counting period can run

a few days

45

Examiner Count System

General Schedule (GS) Levels:

46

GS Level Description

GS-5 Lowest level for an Examiner

GS-7

GS-9

GS-11 Preparation for partial signatory authority

GS-12 Preparation for partial signatory authority

GS-13 Partial Signatory Authority

GS-14 Primary Examiner (full signatory authority)

GS-15 Supervisory Patent Examiner (SPE)

Considerations

INTERVIEWS . . .

Reduce time on application

No “count” for an interview

May result in a disposal

Consider your examiner (junior, partial signatory, primary)

Avoid a “count” Monday interview

Consider timing of interview in view of the fiscal year

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IV. BEST PRACTICES

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Preparation

• What types of interview?

― Personal, USPTO campus

― Telephonic, Video conference

• Arrange with the Examiner

― The examiner’s contact information can be found in the

Conclusion section of the most recent Office action or from the

Employee Locator on the USPTO web page (www.USPTO.gov)

― An applicant may also complete and submit an Application

Initiated Interview Request Form (PTOL-413A) to request an

interview with an examiner. See MPEP 713.01 III.

49

Preparation

• Personal interviews

― Complicated and/or multiple claim elements

to discuss

― Multiple cited references

• Telephonic interviews

― Single issue to discuss

― Previously discussed issue(s)

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• USPTO Automated Interview Request (AIR) Tool

http://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html

• Technology Center Interview Specialists

http://www.uspto.gov/patent/laws-and-regulations/interview-practice/interview-

specialist

• Video Conferencing for Interviews and Public Interview Room

Availability

http://www.uspto.gov/about-us/contact-us/video-conferencing-and-collaboration

• First Action Interview Pilot Program

http://www.uspto.gov/patents-application-process/applying-online/full-first-action-

interview-pilot-program

51

Preparation

Preparation

• Be prepared!

• What does the Examiner want?

• What does the Applicant want?

• Relationships: How does the Examiner view you? And,

How do you view the Examiner?

• Request for Examiner’s Supervisor

― 101 Specialist

52

Preparation

• Be prepared

― Review the prosecution history, cited

references, and responses to date

― Identify the key issues that are meaningful to

Applicant

― Know the claims inside and out

― Amendments to discuss?

― Have M.P.E.P. cites to support arguments

― Case law citations, particularly if recent case

53

Preparation

• What does the Examiner want?

― Wants you to agree and amend the claims

― Wants to explain his/her broad

interpretation and why

― Needs assistance

54

Preparation

• What does the Applicant want?

― Avoid amending the claims

― Explain reasoning in greater detail

― Understand the Examiner’s position from the Office Action

― Allowance

55

Preparation

• How do you view the EXAMINER // How does the Examiner

view YOU?

• RELATIONSHIP building

― Sets the tone for the interview

― Credibility and reasonableness

• Be respectful - disagree without being disagreeable

• Seek a discussion, not a lecture

• It’s not personal

• When to request Examiner’s supervisor //

101 Specialist

56

Agenda

• M.P.E.P. § 713.01 (IV) Scheduling and Conducting An Interview

When Applicant is initiating a request for an interview, an “Applicant

Initiated Interview Request” form (PTOL-413A) should be submitted to the

examiner prior to the interview in order to permit the examiner to prepare in

advance for the interview and to focus on the issues to be discussed . . .

Applicants are encouraged to use form PTO-413A, however, the fact that

applicant does not submit an “Applicant Initiated Interview Request” form is

not, by itself, grounds for the examiner to deny a request for an

interview.

57

Agenda

• Examiner may request an agenda

― Facilitates a focused discussion on the issues

• What to include in an agenda?

― Information about references

― Claims or applied rejections the attorney

wishes to discuss

― Proposed amendments

― Evidence the attorney will be providing

• Header: FOR DISCUSSION PURPOSES ONLY –

NOT FOR ENTRY INTO WRITTEN RECORD

58

Agenda

• M.P.E.P. § 713.03 Interview for “Sounding Out” Examiner Not

Permitted

Interviews that are solely for the purpose of “sounding out”

the examiner, as by local attorney acting for an out-of-town

attorney, should not be permitted when it is apparent that

any agreement that would be reached is conditional upon

being satisfactory to the principle attorney.

NO FISHING EXPEDITIONS!

59

Presenting Amended Claims

• Header:

― FOR DISCUSSION PURPOSES ONLY – NOT FOR ENTRY INTO WRITTEN RECORD

• Claim Amendment Options:

― Hierarchy and range of potential claim amendments

― Client pre-approval

• M.P.E.P. § 713.01 (IV)

The examiner should not hesitate to state, when appropriate, that claims

presented for discussion at an interview would require further search and

consideration. Nor should the examiner hesitate to conclude the interview

when it appears that no common ground can be reached or when it becomes

apparent that the application requires further amendment or an additional

action by the examiner. However, the examiner should attempt to identify

issues and resolve differences during the interview as much as possible.

60

Presenting Amended Claims

• Working set of the pending claims

― WebEx for telephonic or video conferencing

― Mark-up during the course of the interview

― Review dependent claims for options

― Show evolution of claims

• Opportunity to propose and discuss in one instance

61

Thank You

Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

adriana.burgy@finnegan.com

Kenneth E. Horton

Kirton McConkie

khorton@kmclaw.com

Marvin Petry

Stites & Harbison

mpetry@stites.com

62