USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution TUESDAY, MARCH 20, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Adriana L. Burgy, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. Mark D. Sweet, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 1.

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3 Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you that you will receive immediately following the program. For additional information about continuing education, call us at ext. 2.

4 Overview I. USPTO s Perspective II. Applicant s Perspective: Best Practices A. Preparation B. Agenda C. Presenting Amended Claims III.Understanding USPTO System and Adapting the Interview 4

5 Benefits of Interviews I. Gain a better understanding of the USPTO processes, policies, and procedures II. Advance examination of applications III. Facilitate resolution of issues timely IV. Provides an opportunity to discuss various options V. Opens communications between the USPTO and Applicant 5

6 I. USPTO s Perspective: Examiner Interviews 6

7 Examiner Interviews M.P.E.P : Mechanics of Interviews : Interviews before First Official Action : No Fishing Interviews : Substance of Interview made of record : Prohibited Interviews : Models & Exhibits : After-Final Interviews : Rule 312 Interviews 7

8 USPTO Interview Guidelines Interview Practice Guidelines for Applicants: Clarifies policies, procedures, and tools available to enable better communicate with examiners: Effective Interview Practice- Discusses substantive components of interviews: 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: nterview_best_practices.pdf 8

9 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 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: _practice_training_summary.pdf 9

10 Mechanics of Scheduling an Interview 1. Electronic Scheduling: USPTO Automated Interview Request (AIR) Form Tips: --Easier to set up interview by --But information exchanged made of record 2. Schedule with Interview Request Form 3. Schedule by Phone 10

11 Full First Action Interview (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 11

12 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

13 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 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. 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. 13

14 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). 6. Applicant can file another reply, including additional amendments and arguments. 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 14

15 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. Potential early allowance 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). 15

16 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. 16

17 II. Applicant s Perspective: BEST PRACTICES 17

18 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 ( An applicant may also complete and submit an Application Initiated Interview Request Form (PTOL-413A) to request an interview with an examiner. See MPEP III. 18

19 Preparation Personal interviews Complicated and/or multiple claim elements to discuss Multiple cited references Telephonic interviews Single issue to discuss Previously discussed issue(s) 19

20 Preparation USPTO Automated Interview Request (AIR) Tool Technology Center Interview Specialists Video Conferencing for Interviews and Public Interview Room Availability First Action Interview Pilot Program

21 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 21

22 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 22

23 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 23

24 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 24

25 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 25

26 Preparation Who should participate in the interview? Attorneys of record How many? Inventor(s) Technical Specialist / Expert Examiner s Supervisor Primary Examiner // Junior Examiner 26

27 Agenda M.P.E.P (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. 27

28 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 28

29 Agenda M.P.E.P 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! 29

30 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 (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. 30

31 Presenting Amended Claims Have a 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 31

32 III. Understanding the USPTO System and Adapting the Interview to Accommodate That System 32

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34 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

35 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 35

36 Examiner Count System 36

37 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

38 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

39 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

40 Examiner Count System 40

41 Examiner Count System 0 RCEs 1 RCE 2+ RCEs Non-Final OA Final OA RCE Examiner s Answer Abandonment Allowance NFOA counts are highest Motivation to examine thoroughly, early NFOA counts diminish after RCE Motivation to allow applications earlier 41

42 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) 42

43 Examiner Count System Some tasks yield ZERO counts: Restriction Requirements 2 nd + Consecutive Non-final or Final OA Advisory Actions 43

44 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 2 nd Office Action = No Counts 3 Abandonments = 3 x 0.50 counts = 1.5 counts TOTAL = 12.5 Counts (6.25 PUs) 44

45 Examiner Count System The Fiscal Year Runs from October 1 st to September 30 th Goals, bonuses, etc., calculated at that time Timing Considerations: Most PTO initiatives have goals for the year-end Final counts are evaluated on October 1, but the counting period can run a few days 45

46 Examiner Count System General Schedule (GS) Levels: GS Level GS-5 GS-7 GS-9 GS-11 GS-12 GS-13 GS-14 GS-15 Description Lowest level for an Examiner Preparation for partial signatory authority Preparation for partial signatory authority Partial Signatory Authority Primary Examiner (full signatory authority) Supervisory Patent Examiner (SPE) 46

47 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 47

48 Thank You Adriana L. Burgy Finnegan Henderson Farabow Garrett & Dunner Mark D. Sweet Finnegan Henderson Farabow Garrett & Dunner 48