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 21, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: 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. 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. 10 .
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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 4
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 5
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 of 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. 6
Interview Time (08-14) 230,000 220,000 210,000 200,000 190,000 180,000 170,000 160,000 150,000 140,000 130,000 Hours 120,000 110,000 100,000 90,000 80,000 70,000 60,000 50,000 40,000 30,000 20,000 10,000 0 Fiscal Year 2008 2009 2010 2011 2012 2013 2014 7
Percent 12.0% 14.0% 16.0% 18.0% 20.0% 22.0% 24.0% 26.0% 28.0% 30.0% 32.0% 34.0% Disposal Rate (08-15) 2007/10 2008/01 2008/04 2008/07 28.7% of Serial Disposals completed in January 2015 had at least one interview. 2008/10 2009/01 2009/04 2009/07 2009/10 2010/01 2010/04 % of Serial Disposals Having at Least 1 Interview 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 8 2014/10 2015/01
Interview Impact on Compliance Rate Based on random samples of over 52,000 Allowances and Final Rejections from FY 2005 – FY 2014 9
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 10
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 • 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 11
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 12
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 13
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 14
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 15
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. 16
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 17
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 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). 18
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