Examining the Examiner

• Author: Rebecca G. Rudich
• Pages: 33-63

Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

By Rebecca G. Rudich

Rebecca G. Rudich is a registered patent attorney at Meunier Carlin & Curfman LLC

in Atlanta, Georgia. She specializes in domestic and foreign patent prosecution, portfolio

development, and licensing. She can be reached at rrudich@mcciplaw.com.

Examining

the

Examiner

Robert Daly via The Image Bank/GettyImages

Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Few of the items in the patent practitioner’s tool kit

can be as effective and transformative as the exam-

iner interview. The U.S. Patent and Trademark

Ofce (USPTO) Manual of Patent Examining

Procedure (MPEP) calls “[d]iscussions between

an applicant and an examiner . . . often indis-

pensable to advance the prosecution of a patent

application.”1 A survey of applicants presented by the USPTO in

June 2015 suggested that 98 percent of the applicants questioned

felt that an interview was at least somewhat useful in advanc-

ing prosecution.2 That same survey bears out that the number of

hours examiners collectively spent interviewing applicants has

increased over time.3

Access to examiners for interviews has certainly increased.

Whether outcomes are better may depend on perspective. Inter-

views are certainly more structured than they were in the days

of open access to examiners’ ofces at the USPTO in Crys-

tal 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 pre-

pared 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 inter-

view 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 s-

cal year 2008 to 220,000 total examiner hours in scal year

2014.4 The increase in the number of hours may stem at

least from programs implemented by the USPTO, includ-

ing 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 cam-

pus. USPTO rules still state that “[i]nterviews with examiners

concerning applications and other matters pending before

the Ofce must be conducted on Ofce premises and within

Ofce 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 num-

ber of interviews conducted.

Even if the number of hours examiners spend on inter-

views 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 circum-

stances. 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 straightfor-

ward. 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 com-

munication outside the ofce action or reply chain can be

considered an interview. As the USPTO states, “[a]ll discus-

sions between the applicant/practitioner and the examiner

regarding the merits of a pending application will be consid-

ered 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 pat-

ent examiners, the opening of satellite USPTO ofces, and

increased access to technologies, interviews can now even

be conducted “face-to-face” via video conferencing technol-

ogies. 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 equip-

ment) 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 rst ofce 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 rst action interview before the rst

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 depen-

dent 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 electroni-

cally via the electronic ling system (EFS) at least one day before

a rst ofce 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/notication

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 rst action allowance rate of 29 percent, compared to the

total rst action allowance rate of new, noncontinuing appli-

cations for the beginning of scal year 2019 of 14 percent.10

As for timing, the MPEP suggests that “[a]n interview may

be appropriate before applicant’s rst 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 inter-

view after nal rejection is permitted.”12 The one “after-nal”

interview is intended to place an application in condition for