to Advance Patent Prosecution TUESDAY, MARCH 21, 2017 1pm Eastern - - PowerPoint PPT Presentation

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

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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

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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

• f 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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10,000 20,000 30,000 40,000 50,000 60,000 70,000 80,000 90,000 100,000 110,000 120,000 130,000 140,000 150,000 160,000 170,000 180,000 190,000 200,000 210,000 220,000 230,000 Fiscal Year

Hours

2008 2009 2010 2011 2012 2013 2014

Disposal Rate (08-15)

8 12.0% 14.0% 16.0% 18.0% 20.0% 22.0% 24.0% 26.0% 28.0% 30.0% 32.0% 34.0% 2007/10 2008/01 2008/04 2008/07

2008/10 2009/01 2009/04 2009/07 2009/10 2010/01 2010/04 2010/07 2010/10 2011/01 2011/04 2011/07 2011/10 2012/01 2012/04 2012/07 2012/10 2013/01 2013/04 2013/07 2013/10 2014/01 2014/04 2014/07 2014/10 2015/01

Percent

% 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

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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

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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
• f 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

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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

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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

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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)
• r national stage application under 35 USC 371

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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.

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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

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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

• therwise 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.

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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

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Marvin Petry Stites & Harbison mpetry@stites.com

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• 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

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• 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

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• 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

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• 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

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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

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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)

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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)

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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

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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)

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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

• n completing initiatives

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

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Examiner Count System

General Schedule (GS) Levels:

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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.

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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

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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

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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

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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

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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

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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

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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.

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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

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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!

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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.

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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

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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

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