Best P ractices 2 23503 hours in FY 2013 compared with 21273 hours in FY 2012 6651 interview hours in FY 13 have been charged through the AFCP program Interview Time FY 2008 FY ID: 486189
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Slide1
Examiner Interviews
Best
P
racticesSlide2
2
23,503 hours in FY 2013,
compared with 21,273 hours in FY 2012. 6,651 interview hours in FY 13 have been charged through the AFCP program.
Interview
Time
FY 2008 – FY
2013 Slide3
12/3/12
Influence of Interviews on Compliance Rate
Based on random samples of over 28,000 Allowances and Final Rejections from FY 2008 – FY 2012Slide4
Useful content of a detailed Agenda may include:
General intent and/or goal of interviewBrief summary of arguments (if applicable)Applied referencesEvidence relied uponProposed amendments Not submitting an agenda is not a valid reason to deny an interviewReview the application history including the prior art
Understand the inventive conceptIdentify allowable subject matter where appropriateBe prepared to explain position of previous actionInterview PreparationSlide5
Recordation
of Interviews5Use the appropriate Interview Summary form and fill out completelyAttach agenda and any items (including proposed amendments) provided for the interview
Be specifics regarding issues discussedClearly document all agreementsAgreement can be reached for various issues, such as allowability, interpretation of claim limitations, priority dates, application of case law, next steps to be taken, statutory subject matter, etc.Make sure the record is completeSlide6
Next Steps
6
6
Clarify AgreementsRecord
Specific Issues ResolvedNote Any Interpretations Agreed Upon
Identify
Allowable Subject Matter, if
any
Record
Specific Claim
Language
Specify
What Prior Art is
Overcome
Commit
to Specific Steps & Assign responsibility
Examiner steps, for example:
- Consult
with Subject Matter Expert
- Perform
Update
Search
Applicant steps, for example:
- Consult
with Applicant
- File
Response
Provide
Clear
Timeline & Follow-UpSlide7
Interview Webpage
7Slide8
Telephonic interviews
in 2011, 164 cases interviewed, both first and final OAs27% cases had next action allowancesIn-person interviews20 cases interviewed in person over a 4 day period5 allowances1 abandoned1 notice of appeal6 RCEs4 new office actions3 awaiting next action
Interview StatisticsSlide9
F
aster resolution of issues, allowance of applicationsImproved patent quality USPTO recently analyzed correlation between patent quality and whether an interview was conducted“The data shows that interviews help decrease both improper allowances and improper rejections by approximately 40 percent compared to applications without interviews prior to the final disposition.”Benefits of Examiner InterviewsDirector Kappos’ Public Blog, January 15, 2013Slide10
Discuss
possible ways of overcoming rejections without creating extensive file history that can be exploited during litigationFind out if the examiner thinks there is allowable subject matterFind out if the examiner has problems that have not been stated in the written record and that can be easily addressed Benefits of Examiner InterviewsSlide11
Introduce
the examiner to the inventor(s)Many examiners have science and engineering backgrounds, and may appreciate discussing the technology with an inventor and feel more personally connected to the case after meeting him or herThe inventor is likely in a better position to explain the nuances of the technologyBenefits of Examiner InterviewsSlide12
Develop a rapport with the examiner
Establish credibility and trustGet more assistance during prosecutionYou may have many other applications with the same examinerBenefits of Examiner InterviewsSlide13
Understand the psychology and perspective of examiners in general
Examiners are just doing their jobs – don’t make it personalAlways be professional and courteousSome examiners feel underpaid and underappreciatedA little bit of respect can go a long wayStrategies for Successful InterviewsSlide14
Understand the psychology and perspective of examiners in
generalMany examiners are not attorneysThey generally do not view the examination process as adversarial, so don’t treat it that wayUnless there are glaring legal errors in the rejections, it may be better to focus the arguments on the technology, e.g., explain distinctions from the prior artIt is more effective to cite legal principles from the M.P.E.P. rather than case lawStrategies for Successful InterviewsSlide15
Understand the psychology and perspective of examiners in
generalExaminers work under significant time constraintsDon’t expect as much time investment by the examiner after FAOM, and especially after-finalInterview after FAOM, not after-finalPropose solutions that will make their jobs easier, e.g., narrowing amendments, CONSStrategies for Successful InterviewsSlide16
Understand the psychology and perspective of examiners in
generalExaminers work under significant time constraintsDon’t pile on weak arguments – annoying for the examiner, and makes it easier for the examiner to focus on the weakest argumentsStrategies for Successful InterviewsSlide17
Understand the particular examiner on your application
Is the examiner new and still learning?Has the examiner made an honest mistake?Is the examiner just being unreasonable?Strategies for Successful InterviewsSlide18
Thorough preparation is essential
Don’t waste valuable time during the interviewMust have complete knowledge of the file history, cited references, and relevant lawThink through all possible arguments/counterargumentsStrategies for Successful InterviewsSlide19
Thorough preparation is essential
Mock interviews can be useful to explore how different arguments may play out, and identify potential weaknessesHave multiple fallback positions and possible claim amendments ready so that you can respond to whatever course the interview takesStrategies for Successful InterviewsSlide20
Listen to the examiner, ask questions, and create a dialogue
Don’t just lectureBring an inventorOften useful to help explain the technology and establish a rapportBut generally not a good idea to allow the inventor to discuss the legal issues, unless he or she is qualifiedStrategies for Successful InterviewsSlide21
Preparing an agenda
Provide the examiner with enough information to be prepared to cover all the issues you want toBut don’t provide too many details, so that you have some flexibility in the interview, and in case the agenda is made part of the official recordTiming of the interviewAfter FAOMA few weeks out from end of a quarter, but not end of quarterStrategies for Successful InterviewsSlide22
Questions?