You are here:  Ed9 07.2015 Guidebook  » Chapter 700

713    Interviews

MPEP SECTION SUMMARY An interview should be granted when the nature of the case is such that the interview serves to develop or clarify outstanding issues in an application.

MPEP SECTION SUMMARY Interviews may consist of personal appearances, telephone conversations, video conferences or even e-mail. This section covers general policies on interviews including scheduling and conducting an interview.

  Section Frequency Chart

 

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.

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.

MPEP SECTION SUMMARY A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action is encouraged where the examiner determines that such an interview would advance prosecution of the application.

  Section Frequency Chart

MPEP SECTION SUMMARY Interviews that are solely for the purpose of “sounding out” the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement that would be reached is conditional upon being satisfactory to the principal attorney.

  Section Frequency Chart

 

MPEP SECTION SUMMARY The substance of an interview must be made of record. A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. The requirement may be satisfied by submitting a transcript generated during an electronic mail or message exchange. This section covers more details on recording the substance of an interview.

 

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.

It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form that the examiner will provide a written summary.

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.
  
  

MPEP SECTION SUMMARY This section covers when interviews may be prohibited or granted along with special situations. For instance, except in unusual situations, no interview is permitted after the submission of an appeal brief or after a notice of allowability for the application has been mailed.

  Section Frequency Chart

Except in unusual situations, no interview is permitted after the submission of an appeal brief or after a notice of allowability for the application has been mailed.

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 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.

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.
  
  

MPEP SECTION SUMMARY The invention in question may be exhibited or demonstrated during the interview by a model or exhibit thereof. A model or exhibit will not generally be admitted as part of the record of an application. However, a model or exhibit submitted by the applicant which complies with 37 CFR 1.91 would be made part of the application record.

 

MPEP SECTION SUMMARY This section discusses details on interviews after a final rejection.

  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.

MPEP SECTION SUMMARY After an application is sent to issue, it is technically no longer under the jurisdiction of the primary examiner. An interview with an examiner that would involve a detailed consideration of claims sought to be entered and perhaps entailing a discussion of the prior art for determining whether or not the claims are allowable should not be given.

 

» 714    Amendments, Applicant’s Action