Preparing an Interview Agenda

Recently, we were asked how we prefer to prepare an interview agenda with an Examiner at the USPTO.

One of the defining characteristics of contemporary interview practice is the brief period in which the Examiner must prepare for and conduct the interview.  Specifically, the Examiner is granted only 30 minutes to prepare for an interview and 30 minutes to conduct the interview. 

Another characteristic of interview practice is that interviews often are conducted more than one month after the Examiner prepared the Office Action.  So, the Examiner likely does not recall the specifics of the application.

One last point about interview practice is that Examiners generally do not agree immediately that the proposed amendment overcomes the current rejection.  There are many reasons why: reasonable minds can differ; the Examiner might lack negotiation authority; the effectiveness of an amendment can seem technology-dependent (e.g., mechanical Examiners are more likely to agree); Applicants might instruct ineffective amendments; the Examiner might see the interview as a negotiation; and so on.

So, we have two goals for our interview agenda.  The first goal is to prepare the Examiner with all of the necessary information to agree with us immediately.  The second goal is to continue with a meaningful interview, if the Examiner does not agree with us initially.

For example, if we are proposing a claim amendment, we suggest including the specific claim amendment.  That is, we do not simply reference a portion of the specification or figures.  Claiming the portion too broadly might not overcome the art; claiming the portion too narrowly might not be valuable to the Applicant.  We suggest letting the Examiner consider the specific amendment believed to overcome the art and satisfy the Applicant.

Further, we suggest identifying the support for any amendment.  The Examiner probably will not raise the written description requirement during the interview.  However, identified support allows the Examiner to review the relevant portion of the application and consider the context of the amendment.  And, if a dependent claim partially supports the amendment, mentioning that support allows the Examiner to reconsider why the dependent claim was rejected (or, possibly, indicated as allowable).

We also suggest including specific arguments.  Generally, it is not enough to simply state the prior art does not disclose a particular feature.  Likewise, it is not enough to state the claim language is different from the subject matter of the prior art.  Rather, for an effective interview, an agenda should describe how the claim language differs from the teachings of the prior art.

When we make our arguments, we cite to particular pages of the Office Action: we want to remind the Examiner about their specific points, without making them read their entire rejection.  Similarly, we cite to only the most relevant paragraphs or lines of the applied references.

Previously, we preferred conducting interviews that addressed all matters in the Office Action, particularly as a way to begin positively by resolving informalities like drawings objections.  Given the reduction in time for interviews, we now prefer leaving these matters to the written response to the Office Action.

Finally, we like to cite to the specification for the inventive effect.  Examiners frequently raise issues during interviews that relate to the inventive effect, such as eligibility under 35 USC 101, obviousness of a design choice under 35 USC 103, and instructions from their supervisor to allow only independent claims directed to the invention.  Examiners often raise these issues during interviews, even though the Office Action itself did not raise these issues.  Although it is possible to cite to the specification if the Examiner raises these issues, we find our arguments carry more weight when we can refer back to the agenda.

If Modal PLLC can prepare for an Examiner interview for your US patent application, please contact us.

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