Best Practice for Examiner Interviews

Updated: Jan 28

Author: Howard Sheerin, SiliconValleyIP.com


An examiner interview should be requested after every office action (first office action, final office action, advisory action).


Scheduling the Interview

Although there is a formal process including an official USPTO form for requesting an examiner interview, I have found the most effective technique for scheduling the interview is to simply call the examiner to setup a day and time that is best for the examiner. Most of the time you will get the examiner's voice mail, in which case I leave a message asking the examiner to call me back, and if the examiner gets my voicemail, to leave the best day and time for the interview. I will then call the examiner back and confirm the suggested day and time (typically by leaving the examiner another voice mail) as well as tell the examiner I will email written remarks in preparation for the interview. This way you give the examiner the most flexibility in scheduling since their time is more important than yours in this regard, and they appreciate the deference (start the whole process off with a respectful, deferential demeanor at least when scheduling the interview).


Email Arguments to be Presented During Telephone Interview

The official interview request form (MPEP § 713) includes a two-line field for entering a "Brief Description of Arguments to be Presented" with the option of attaching a supplemental sheet. I think this gives a dangerous impression to practitioners that the interview can be conducted on-the-fly and effectively off the record. This is dangerous because there is an explicit "recommendation" that all communication with the US Patent Office be conducted in writing (37 CFR § 1.2). Federal judges understand the ex parte nature of patent prosecution and do not look fondly on practitioners who attempt to deceive or subvert the patent office procedures. Accordingly I highly recommend you not only submit "Arguments to be Presented," but that this document be drafted exactly as you would draft a response to the office action (as if there would be no interview) including proposed claim amendments when appropriate. You then change the title of the document from "Reply to Office Action" to "Arguments to be Presented During Telephone Interview." This will avoid any argument of deception with the patent office. In addition, when the interview goes well (as it should), your response to the office action is already drafted (except for adding a Summary of Telephone interview section). When you email the Arguments to be Presented document, include in the body of the email the following statement:

"I hereby authorize the USPTO to conduct email communication with the applicant regarding patent application serial no. xx/xxx,xxx."

Holding the Telephone Interview

Start the interview by asking whether the examiner received the email remarks, and confirm the examiner has read the remarks. Typically the examiner will have read the remarks and be prepared for the interview, but if not, you could suggest calling back in 15 minutes to give the examiner a chance to review the remarks. When the remarks are well written because they are drafted as a Reply to Office Action, many times the examiner will simply agree with the remarks resulting in a very short interview. In some cases the examiner needs clarification of the written remarks in view of the prior art. Your main goal in the interview is for the examiner to agree to the written remarks as drafted. Some examiners will suggest amending the claims so as to limit (rather than clarify) the scope. You want to avoid making any scope limiting amendments unless absolutely necessary. Scope limiting amendments (and even clarifying amendments) can become the main focus of litigation and often the basis of non-infringement decisions. There are times when I get very animated and... yes... even angry at the suggestion the claims be amended so as to limit the scope. I will explain to the examiner that any such scope limiting amendments could render the claims worthless which is a true statement. Do not agree to scope limiting claim amendments just to appease the examiner and further prosecution. Zero claim amendments is ideal, with minor clarifying claim amendments acceptable when necessary. But scope limiting claim amendments should ideally only be made when the claim is otherwise anticipated by the prior art. In these situations, the written remarks emailed to the examiner should already include a proposed claim amendment to overcome the rejection so that the interview can be used to convince the examiner to withdraw the rejection rather than musing about possible claim amendments on-the-fly.


Summary of Telephone Interview

The USPTO requires a summary of a telephone interview be submitted by the applicant (37 CFR § 1.133) and provides an interview summary form. I do not recommend using this form. Instead I recommend adding a paragraph to the Reply to Office Action that re-states the main argument (e.g., traversing the rejection of the independent claim(s)). The beginning of this paragraph states that "remarks were emailed to the examiner in preparation for the interview which are reproduced below." In this manner, everything is in writing and on the record. What was discussed during the telephone interview? Well... the arguments being asserted in this Reply to Office Action. The Reply to Office Action is on the record, and therefore the substance of the interview is also on the record. Sometimes I will include in the Summary of Telephone Interview paragraph the examiner's response to my argument. Then in the body of the Reply to Office Action I will refer back to the Summary of Telephone Interview when addressing the examiner's arguments in detail. Here is an example Summary of Telephone Interview from a patent application I prosecuted:


SUMMARY OF TELEPHONE INTERVIEW

The Applicant held a telephone interview with the examiner on 06/10/2020 to discuss the claim rejections based on Liu et al. (US 9,495,988). The Applicant emailed remarks to the examiner in preparation for the interview which are reproduced below. During the interview, the Applicant explained that Liu does not teach to generate a read track trajectory for data track N based on the PES generated when writing to data track N. That is, Liu does not distinguish between a write track trajectory or read track trajectory for data track N because Liu defines both trajectories based on the recorded servo data which does not change from write to read. The Applicant agreed to amend the claims to further clarify that the write track trajectory when writing to data track N is different than the read track trajectory when reading data track N. The examiner agreed this amendment would overcome the rejections.


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