Examining the Examiner

Access to examiners for interviews has certainly increased. Whether outcomes are better may depend on perspective. Interviews are certainly more structured than they were in the days of open access to examiners’ offices at the USPTO in Crystal City before security increased in 2001. In current practice, examiner-applicant contact is more limited, and an interview outcome can be more positive if the participants are well prepared and respectful of one another. Understanding the ins and outs of the interview and the art of the interaction can improve the process and reinforce the MPEP’s assertion that an interview can be indispensable to advance prosecution.

More Examiner Hours on Interviews

According to the USPTO in June 2015, the number of hours increased from just under 80,000 total examiner hours in fiscal year 2008 to 220,000 total examiner hours in fiscal year 2014.⁴ The increase in the number of hours may stem at least from programs implemented by the USPTO, including the Full First Action Interview Pilot Program (2011) and the After Final Consideration Pilot 2.0 (2013), for which the applicant must be willing to participate in an interview. Some of the increase may also come from the addition of the option of a “face-to-face” interview. Before the introduction of an internet-based video interview program by the USPTO, a “face-to-face” interview meant a trip to the Virginia campus. USPTO rules still state that “[i]nterviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate.”⁵ That said, the “face-to-face” interview may be face-to-face via a USPTO-provided WebEx platform at a time mutually agreeable to the applicant and the examiner. The convenience of the video interview may be a factor in the increased number of interviews conducted.

Even if the number of hours examiners spend on interviews has increased, the number of interviews and/or interview time in a single patent application is limited and often at the examiner’s discretion, absent certain circumstances. So, how does an applicant get the most out of an interview? First, there are some basic requirements for requesting and conducting an interview.

The Basics of an Examiner Interview

The basics of requesting an interview are pretty straightforward. Considering that an interview is a formal discussion of the substance of a patent application under examination with the patent examiner conducting the examination, any communication outside the office action or reply chain can be considered an interview. As the USPTO states, “[a]ll discussions between the applicant/practitioner and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record.”⁶ A discussion does not have to be oral for it to count as an interview. Even email and instant messaging can be considered an interview.

Until just a few years ago, applicants had two choices for how to conduct an oral or “personal” interview: in person or via telephone. With the increase in the remote working of patent examiners, the opening of satellite USPTO offices, and increased access to technologies, interviews can now even be conducted “face-to-face” via video conferencing technologies. Gone are the days when a patent practitioner would set aside a day or two to travel to Washington, D.C., having contacted a number of examiners and scheduled back-to-back-to-back interviews. In fact, there is no requirement that a teleworking examiner must come to a USPTO facility to conduct an interview. An applicant wishing to conduct an interview may come to a USPTO facility and make use of a public interview room (and its video conferencing equipment) to conduct the interview. Video interviews are to be conducted via the USPTO-supplied WebEx platform.

As for timing, in the course of prosecution, an interview is ordinarily not conducted before a first office action, except for in a continuation or a request for continued examination.⁷ The Full First Action Interview Pilot Program (FFAIPP), which is now in place for all technology centers, provides an exception to this rule.

Under the FFAIPP, which has been in place since 2011, an applicant is entitled to a first action interview before the first action on the merits issues.⁸ To qualify, the application must be a non-reissue, nonprovisional utility application or a national stage that entered the U.S. under 35 U.S.C. § 371(c). There can be no excess claims, i.e., the application can have no more than three independent and 20 total claims, and none can be multiple dependent claims. If there is more than one invention, the applicant must agree to make an election without traverse. The form for the request to participate in the FFAIPP must be submitted electronically via the electronic filing system (EFS) at least one day before a first office action on the merits appears in the Patent Application Information Retrieval (PAIR) system. Additionally, the applicant must agree to not request a refund of the search fee or any excess claim fees paid in the application after the mailing/notification date of the preinterview communication from the examiner.⁹

Interestingly, as of June 2019, USPTO statistics showed that applications involved in the FFAIPP since inception had a first action allowance rate of 29 percent, compared to the total first action allowance rate of new, noncontinuing applications for the beginning of fiscal year 2019 of 14 percent.¹⁰

As for timing, the MPEP suggests that “[a]n interview may be appropriate before applicant’s first reply when the examiner has suggested that allowable subject matter is present or where it will assist applicant in judging the propriety of continuing the prosecution.”¹¹ According to the MPEP, “[n]ormally, one interview after final rejection is permitted.”¹² The one “after-final” interview is intended to place an application in condition for allowance or resolve issues for appeal and is within the examiner’s discretion to resolve the issues “with only nominal further consideration.”¹³ The After Final Consideration Pilot 2.0 (AFCP 2.0) also requires that an applicant be available for an interview.¹⁴ As described in the Federal Register notice setting forth the AFCP 2.0, if the examination after a proper request and certification for treatment under AFCP 2.0 is filed does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.¹⁵ Thus, a crafty applicant can potentially conduct three to four interviews in a single case, when, in practice, only one interview may be “as of right.” However, interviews after allowance or after the submission of an appeal brief generally are not acceptable, because the examiner is no longer involved in prosecution at that point.¹⁶

The Art of the Interview

Whether an applicant should conduct an interview is another question. Regardless of when an examiner interview is conducted, it should be substantive and meaningful. According to the MPEP, “[a]n interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.”¹⁷

Examiners have a limited amount of time to conduct prosecution of a single application from filing to disposition, and the amount of time varies per art unit. An examiner gets an additional hour to prepare for and participate in an interview with an applicant, regardless of whether that interview is in person, telephonic, or via video teleconferencing. Keeping in mind that the “hour” afforded the examiner includes both preparation time and actual “in interview” time, applicants should be respectful of the examiner’s time and do their best to use the interview to advance prosecution.

Many examiners will ask for an agenda before the interview. Most would like to receive proposed claim amendments in advance in order to have time to assess the amendments prior to the interview. Most will not provide an indication of allowability in an interview, especially if no proposed amendments are presented prior to the interview, if the amendments are not agreed to in the interview, or if the claims have substantially changed from the amendments previously proposed.

For a successful interview, looking to the examiner as a partner in gaining allowance is important to success. Keeping in mind that examiners often telecommute, the interview is an opportunity for the examiner to have contact with someone who works in the technology and outside the USPTO. It is a chance to learn the state of the art and about use of the technology in practical applications from a live person. It is also an opportunity for the applicant to build a relationship with an examiner. The relationship can prove helpful for the case being examined and also for other cases in the same technology for the same applicant that the examiner might be handling. If a supervisory or primary examiner is involved in the interview, which should be the case if the working examiner does not have signature authority, it is possible that the practitioner’s relationship with the senior examiner will span multiple applications.

Deborah Lu, PhD, a partner with Duane Morris LLP’s New York office, says that she finds that relationship building is harder now in the age of teleworking examiners. “You used to get to know examiners and hear about their lives and their families. That’s harder now,” she says. Even so, Dr. Lu says it is important to build those relationships. She recommends still going to the USPTO for an interview even if the working examiner is remote. She also advises requesting a primary or supervisory examiner. She routinely involves clients in her interviews, especially those at the USPTO. Such contact is validated by one anonymous examiner, who says, “It’s nice to talk to people in the field, especially when working remotely.” He says, “It’s easy to reject on paper, but it’s harder to reject someone on the phone. If you can see them on the screen, it’s even harder to reject the application.”

Also key from both an applicant’s and an examiner’s perspective is preparation. Dr. Lu advises to pay attention to the last office action for clues as to what the examiner will allow. She often uses a slide deck presentation through the USPTO’s WebEx platform for interviews to show why the invention in question is important, for example, commercially or in real-world impacts. Dr. Lu suggests that involving an inventor in the process can be helpful in conveying the important aspects of the invention and making the interview more personal.

Inventor involvement in an interview has the possibility of being either productive or damaging. Inventors who understand the patenting process will understand that claims drive the prosecution and that reviewing the claims in view of the prior art is probably the most productive use of interview time. Keeping an inventor focused during the short duration of the interview can be accomplished with preparation, including preparing an agenda and predefining an inventor’s role in the interview. Inventors are particularly helpful in interviews in giving an education of the state of the art, distinguishing the claims over the prior art, and explaining how the invention is beneficial in a real-world setting, including if the invention has seen commercial success or met a long-felt need.

However, an inventor who wants to speak to elements not in the claim or specification or merely boasts about features of the invention without a grounding in the specification can turn the interview to a discussion of the contents of the specification rather than a productive discussion of allowable, supported features. Putting an interview back on track may be difficult once it heads off the rails. Again, preparation and planning, including an understanding of the invention and the prior art, particularly with a participating inventor, are advisable.

Both Dr. Lu and another anonymous examiner agree that contacting the examiner to ask for suggestions about what would make a claim allowable is unproductive. Because the examiner has limited time to prepare for and conduct an interview, a proposed amendment, with support, and preparation for why that proposed amendment is distinguishable over the art of record are common to most successful interviews. The USPTO instructs examiners that “[a]n interview with an examiner that would involve a detailed consideration of claims sought to be entered and perhaps entailing a discussion of the prior art for determining whether or not the claims are allowable should not be given.”¹⁸ In other words, fishing expeditions looking for the examiner to craft an allowable amendment are not acceptable.

It should go without saying that using an interview to berate an examiner is not only unproductive but also may be harmful to the applicant’s ultimate goal of allowed claims. However, such interviews can and do happen, particularly where the interview is not in person. Needless to say, an offensive applicant is likely to lose credibility with the examiner in the current case and in future dealings with the examiner. Moreover, “[a]pplicants and their attorneys . . . are required to conduct their business with the [USPTO] with decorum and courtesy.”¹⁹ Failure to do so could result in a referral to the Office of Enrollment and Discipline for further action. Attorneys who are frustrated with an examiner can avoid such conflict by finding an avenue to address their frustration while maintaining decorum and courtesy, including reaching out to a supervisory patent examiner, technology center director, or patent ombudsman.²⁰

In sum, the applicant and the examiner are partners in reaching the objective of allowable claims. Working together to achieve that goal is best accomplished by showing mutual respect and putting in the preparation time to make an interview productive. Meaningful proposed amendments, an indication of how the proposed amendments find support in the specification, and an explanation of how the claims can be differentiated over the prior art all factor into a successful interview, no matter whether that interview is in person, via telephone, or via video.

Endnotes

1. U.S. Patent & Trademark Office, Manual of Patent Examining Procedure (MPEP) § 713 (9th ed. Rev. 8, Jan. 2018).

2. U.S. Patent & Trademark Office, Interview Training 6 (2015), https://www.uspto.gov/sites/default/files/documents/FY15%20Interview%20Training%20-%206-26-2015.pdf.

3. Id. at 4.

4. Id.

5. 37 C.F.R. § 1.133(a)(1).

6. MPEP, supra note 1, § 713.

7. 37 C.F.R. § 1.133(a)(2).

8. Full First Action Interview Pilot Program, U.S. Pat. & Trademark Off., https://www.uspto.gov/patent/initiatives/first-action-interview/full-first-action-interview-pilot-program (last modified Feb. 26, 2015).

9. Full First Action Interview Pilot Program, 1367 Off. Gaz. Pat. & Trademark Office 42 (June 7, 2011).

10. Data Visualization Center: Patents Dashboard, U.S. Pat. & Trademark Off., https://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1007 (last visited Apr. 14, 2020).

11. MPEP, supra note 1, § 713.05.

12. Id. § 713.09.

13. Id.

14. After Final Consideration Pilot 2.0, U.S. Pat. & Trademark Off., https://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20 (last modified Sept. 4, 2019).

15. After Final Consideration Pilot Program 2.0, 78 Fed. Reg. 29,117 (May 17, 2013).

16. MPEP, supra note 1, § 713.05.

17. Id. § 713.01(IV).

18. Id. § 713.10.

19. 37 C.F.R. § 1.3.

20. Patents Ombudsman Office, U.S. Pat. & Trademark Off., https://www.uspto.gov/patent/ombudsman-program (last modified Oct. 15, 2019).