USPTO Examiner Interview Strategies:
Preparing for and Conducting Interviews to
Advance Patent Prosecution
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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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I. USPTO’s Perspective
II. Applicant’s Perspective: Best Practices
C.Presenting Amended Claims
III.Understanding USPTO System and Adapting
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
V. Opens communications between the USPTO and
I. USPTO’s Perspective:
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
USPTO Interview Guidelines
• Interview Practice Guidelines for Applicants: Clarifies policies,
procedures, and tools available to enable better communicate
• Effective Interview Practice: Discusses substantive components
• Interview Best Practices: identifies best practices that can be
followed by Examiners and Applicants, including accessibility,
preparation, substance, and recordation tools and techniques:
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:
Mechanics of Scheduling an Interview
1. Electronic Scheduling: USPTO Automated Interview Request
--Easier to set up interview by email
--But information exchanged made of record
2. Schedule with Interview Request Form
3. Schedule by Phone
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
• Give applicants more options regarding the amount of notice
and procedure needed
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
5. NO fee is required (but right to request a pre-examination refund of fees is
6. Must be a non-reissue, non-provisional utility application under 35 USC § 111(a)
or national stage application under 35 § USC 371
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
➔ Filed second reply with supplemental amendments and/or
arguments before the Examiner issues another PIC.
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
6. Applicant can file another reply, including additional amendments and
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
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