A request for an Applicant-Initiated Interview with an Examiner and his or her supervisor (Supervisory Patent Examiner or SPE) at the USPTO is typically granted as a matter of right after a first Office Action (OA) has been filed, but before a final OA has issued. After a final-rejection OA, an interview request is granted at the discretion of the Examiner. Most intellectual property firms can explain the formalities of the process.
In situations in which OA responses have not substantially advanced prosecution of a patent application to place it in condition for allowance based on the claims submitted from the patent-drafting stage or amended during prosecution, an Examiner Interview can be a valuable opportunity to resolve misunderstandings in the prosecution record as part of an effective IP strategy for obtaining an allowance.
An Examiner Interview allows an Applicant (typically through a representative) to clarify assertions in the prosecution record regarding the relevance of cited art in support of obviousness rejections, for example. In many instances, an Examiner may not have a full appreciation of the state of the art, degree of complexity, burden of experimentation, requirements for enablement, and/or lack of predictability. Moreover, an Examiner may err in improperly applying impermissible hindsight reasoning in an OA rejection. An Examiner Interview provides an Examiner an opportunity to better understand the nature of a patent application.
Bringing an SPE into the discussion also provides a new set of eyes and ears to consider the points being raised. While an Examiner often consults with his or her SPE prior to issuing an OA, the SPE is not necessarily abreast of all the nuances that have been presented in the prosecution history.
An Examiner Interview with both an Examiner and SPE can dramatically influence the advancement of prosecution, and achieve the goals of the IP strategy, if handled properly. It is noted that an Examiner Interview cannot be used to “sound out” the Examiner, according to the MPEP (Manual of Patent Examining Procedure). That is, one should not approach an Examiner Interview as a “fishing expedition” to see if an Examiner will provide any hints or tips on how to amend the claims into an allowable form. Rather, an Examiner Interview is meant “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.” Regardless of the outcome of an Examiner Interview, an Applicant is still obligated to formally reply to an outstanding OA of record.
In cases involving questions of the state of the art, it is advisable to use affidavits or declarations (albeit with caution) as supporting references to arguments made in OA responses. Generally, such declarations should be buttressed by the filing of an Information Disclosure Statement (IDS) including substantiating evidence in the form of scientific journal articles, patent documents, and/or patent-office correspondence from parallel prosecution of the invention in other jurisdictions. In some cases, the prosecution history of cited art may be used to point out issues of prosecution history estoppel in situations in which the doctrine of equivalents is being asserted too broadly.
Such considerations are complex activities which can incur significant legal costs. It is important to appraise the likelihood of success in such matters at each stage of the process in the context of the overall IP strategy. Furthermore, as mentioned above, use of such legal instruments should be done with caution. It can’t be overemphasized that all documents filed will become part of the prosecution history. Statements concerning cited art, admitted prior art, distinguishing features, and contrasting elements are entered into the record (referred to as the “file wrapper”) for all to see.
Even if a patent is ultimately issued, such statements of record can be used by opposing parties to fend off claims of infringement, and limit damage claims in litigation proceedings. So, a word to the wise, make sure you have mapped out such potential scenarios well enough in your prosecution strategy to provide a reliable reference point regarding risk assessment.
Both in-person and telephonic Examiner Interviews can be conducted. (Videoconference Examiner Interviews can also be held, but only at a limited number of Video Conference Centers (VCCs) maintained by the USPTO at Patent and Trademark Depository Libraries (PTDLs) in Sunnyvale, California and Detroit, Michigan.) Telephonic interviews can be very effective, as well as saving the additional expense of traveling to the USPTO. However, it is important to clearly outline an agenda in advance for the Examiner and SPE of the points that will be discussed at the meeting, which will typically not exceed one hour.
In-person interviews, when executed well, can be extremely constructive in advancing prosecution. When complex issues are being discussed, articulating the salient points of your case while referring to an extensive amount of reference material can only be accomplished effectively via in-person interviews where both parties have undivided attention.
FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.