2281 Interviews in Ex Parte Reexamination Proceedings
|
(a) Interviews in ex parte reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be conducted in the Office at such times, within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director. Interviews for the discussion of the patentability of claims in patents involved in ex parte reexamination proceedings will not be conducted prior to the first official action. Interviews should be arranged in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.
(b) In every instance of an interview with an examiner in an ex parte reexamination proceeding, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111. Patent owner’s response to an outstanding Office action after the interview does not remove the necessity for filing the written statement. The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the interview, or as a separate paper within one month from the date of the interview, whichever is later.
In person interviews between examiner and the owners of patents undergoing ex parte reexamination or their attorneys or agents must be had in the Office at its Alexandria location or one of the Office’s satellite locations at such times, within Office hours when building security permits public admission, as the respective examiners may designate.
- Telephonic and videoconferencing interviews are permitted in ex parte reexamination proceedings
Interviews for the discussion of the patentability of claims in patents involved in reexamination proceedings will ordinarily not be had prior to the first Office action following the order for reexamination and any submissions pursuant to 37 CFR 1.530 and 1.535.
- Such interviews will be permitted prior to the first Office action only where the examiner initiates the interview for the purpose of providing an amendment which will make the claims patentable and the patent owner’s role is passive.
- The patent owner’s role (or patent owner’s attorney or agent) is limited to agreeing to the change or not.
- The patent owner should not otherwise discuss the case on the merits during this interview.
The patent owner’s questions on purely procedural matters may be answered by the examiner at any time during the proceeding.
PATENT OWNER’S STATEMENT OF THE INTERVIEW
In every instance of an interview with the examiner, a patent owner’s statement of the interview, including a complete written statement of the reasons presented at the interview as warranting favorable action, must be filed by the patent owner.
- The written statement must be filed either as a separate paper within one month after the date of the interview, or as a separate part of a response to an outstanding Office action, whichever is later.
The requirement for a patent owner’s statement of the interview cannot be waived by the examiner.
» 2282 Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon
