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  • USPTO Examiner Interview Strategies:

    Preparing for and Conducting Interviews to

    Advance Patent Prosecution

    Today’s faculty features:

    1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

    The audio portion of the conference may be accessed via the telephone or by using your computer's

    speakers. Please refer to the instructions emailed to registrants for additional information. If you

    have any questions, please contact Customer Service at 1-800-926-7926 ext. 1.

    THURSDAY, JUNE 20, 2019

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

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

    Mark D. Sweet, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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  • 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

    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

    6

  • I. USPTO’s Perspective:

    Examiner Interviews

    7

  • Examiner Interviews

    M.P.E.P. § 713

    § 713.01: Mechanics of Interviews

    § 713.02: Interviews before First Official Action

    § 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

    8

  • USPTO Interview 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

    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 § 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

    10

  • Mechanics of Scheduling an 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

    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 regarding the amount of notice and procedure needed

    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 371

    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 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.

    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.

    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

    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 iss