713 Interviews
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713.01 General Policy, How Conducted
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Section Frequency Chart
(a)
(1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and 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.
(2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.
(3) The examiner may require that an interview be scheduled in advance.
(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
I. WHERE AND WHEN TO CONDUCT INTERVIEWS
Interviews consist of personal appearances, telephone conversations, video conferences or even e-mail
II. SPECIAL REQUIREMENTS FOR USING INTERNET COMMUNICATIONS
Internet e-mail, instant message system, or video conferencing shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless a written authorization from the applicants or an attorney/agent of record has been given to use Internet communications.
The best practice is to have a written authorization of record in the file.
- However, an oral authorization from the applicant/practitioner is sufficient for video conferencing interviews.
- The oral authorization is limited to the arrangement of video conference interview (including the meeting invitation) and does not extend to other communications regarding the application.
III. VIDEO CONFERENCING
- A video conference is a meeting, usually via the Internet, using USPTO-supplied collaboration tools to visually interact and collaborate with people anywhere in real time.
- All video conferences for interviews MUST originate or be hosted by USPTO personnel.
IV. SCHEDULING AND CONDUCTING AN INTERVIEW
An interview should normally be arranged for in advance, as by letter, facsimile, electronic mail, or telephone call, in order to insure that the primary examiner and/or the examiner in charge of the application will be available.
When applicant is initiating a request for an interview, an "Applicant Initiated Interview Request" form should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed.
- This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, instant message system or video conference, and should include a brief description of the issues to be discussed
When a telephone call is made to an examiner and it becomes evident that a lengthy discussion will ensue or that the examiner needs time to restudy the situation, the call should be terminated with an agreement that the examiner will call back at a specified time.
An interview should be had only when the nature of the case is such that the interview could serve 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.
During an interview with a pro se applicant (i.e., an applicant who is prosecuting his or her own case and is not familiar with Office procedure), the examiner may make suggestions that will advance the prosecution of this case; this lies wholly within the examiner’s discretion.
Examiners may grant one interview after final rejection.
An interview, whether by video conference, over the telephone, or in person, should be arranged for in advance, and that use of the USPTO's Automated Interview Request (AIR).
V. VIEWING OF VIDEO DURING INTERVIEWS
The USPTO has compact disc player equipment available for viewing video discs from applicants during interviews with patent examiners.
Attorneys or applicants wishing to show a video during an examiner interview must be able to demonstrate that the content of the video has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application.
713.02 Interviews Prior to First Official Action
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713.03 Interview for “Sounding Out” Examiner Not Permitted
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713.04 Substance of Interview Must Be Made of Record
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(b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
The action of the U.S. Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews.
Examiners must complete an Interview Summary form for each interview where a matter of substance has been discussed during the interview
- For an applicant-initiated interview, it is the responsibility of the applicant to make the substance of the interview of record in the application file, and it is the examiner's responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability; and
- For an examiner-initiated interview, it is the responsibility of the examiner to make the substance of the interview of record either on an Interview Summary form or, when the interview results in allowance of the application, by incorporating a complete record of the interview in an examiner's amendment.
The complete and proper recordation of the substance of any interview should include at least the following applicable items:
- (A) a brief description of the nature of any exhibit shown or any demonstration conducted;
- (B) identification of the claims discussed;
- (C) identification of specific prior art discussed;
- (D) identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner;
- (E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
- (F) a general indication of any other pertinent matters discussed;
- (G) if appropriate, the general results or outcome of the interview; and
- (H) ) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form is entered.
I. ITEMS REQUIRED IN A COMPLETE AND PROPER SUMMARY
The complete and proper recordation of the substance of any interview should include or be supplemented to include at least the following applicable items:
- (A) a brief description of the nature of any exhibit shown or any demonstration conducted;
- (B) identification of the claims discussed;
- (C) identification of specific prior art discussed;
- (D) identification of the principal proposed amendments of a substantive nature discussed (may refer to a copy attached to the Interview Summary form completed by the examiner);
- (E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
- (F) a general indication of any other pertinent matters discussed;
- (G) if appropriate, the general results or outcome of the interview; and
- (H) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary form is entered.
II. EXAMINER TO CHECK FOR ACCURACY
Examiners are expected to carefully review the applicant’s record of the substance of an interview. If the record is not complete or accurate, the examiner may give the applicant a 2-month time period to complete the reply where the record of the substance of the interview is in a reply to a non-final Office action.
713.05 Interviews Prohibited or Granted, Special Situations
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An interview may be appropriate before applicant’s first 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.
Office employees are forbidden to hold either oral or written communication with an unregistered or a suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant.
Interviews are frequently requested by persons whose credentials are of such informal character that there is serious question as to whether such persons are entitled to any information. In general, interviews are not granted to persons who lack proper authority from the applicant or attorney or agent of record in the form of a paper on file in the application.
- A MERE POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.
Interviews are generally not granted to registered individuals to whom there is no power of attorney or authorization to act in a representative capacity.
- A practitioner cannot authorize other registered practitioners to conduct interviews unless the client gives informed consent.
- Furthermore, even with informed consent, a practitioner should not authorize a nonpractitioner to conduct interviews as this could be considered aiding in the unauthorized practice of law.
While a registered practitioner not of record may request an interview (if the practitioner is authorized to do so by the applicant or the attorney of record), it is recommended that a power of attorney or authorization to act in a representative capacity be filed, preferably via EFS-Web, prior to the interview.
- Registered practitioners, when acting in a representative capacity, can alternatively show authorization to conduct an interview by completing, signing and filing an Applicant Initiated Interview Request Form.
- This eliminates the need to file a power of attorney or authorization to act in a representative capacity before having an interview.
- However, an interview concerning an application that has not been published with an attorney or agent not of record who obtains authorization through use of the of the interview request form will be conducted based on the information and files supplied by the attorney or agent in view of the confidentiality requirements of 35 U.S.C. 122(a).
Interviews normally should not be granted unless the requesting party has authority to bind the principal concerned.
- The use of the provisions of 37 CFR 1.34 by a third party or its representative to conduct an interview, or take other action not specifically permitted by the rules of practice in an application for patent, will be considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.
For an interview with an examiner who does not have negotiation authority, arrangements should always include an examiner who does have such authority, and who is familiar with the application, so that authoritative agreement may be reached at the time of the interview.
GROUPED INTERVIEWSFor attorneys remote from the Washington, D.C. area who prefer in-person or video conference interviews, the grouped interview practice is effective.
- If in any case there is a prearranged interview, with agreement to file a prompt supplemental amendment putting the case as nearly as may be in condition for concluding action, prompt filing of the supplemental amendment gives the application special status, and brings it up for immediate special action.
713.08 Demonstration, Exhibits, Models
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713.09 Interviews Between Final Rejection and Notice of Appeal
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Section Frequency Chart
Normally, one interview after final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal.
- However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing.
Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time.
A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application.
713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312
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