MPEP 713

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713 Interviews[edit | edit source]

The personal appearance of an applicant, attorney, or agent before the examiner or a telephone conversation or video conference or electronic mail between such parties presenting matters for the examiner’s consideration is considered an interview.

713.01 General Policy, How Conducted[edit | edit source]

37 CFR 1.133. Interviews.


(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.

Interviews must be conducted on the Office premises, such as in examiner’s offices, conference rooms or the video conference center.

Interviews are permissible during normal business hours on Monday through Friday except the hours in which the examiner is working overtime.

I.SPECIAL PROCEDURES FOR USING INTERNET ELECTRONIC MAIL

Internet e-mail 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 e-mail. See MPEP § 502.03. In such cases, a paper copy of the Internet e-mail contents 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.VIDEO CONFERENCE CENTER

In the interest of providing better service to its customers, the U.S. Patent and Trademark Office (USPTO) has established a Video Conference Center (VCC) to expedite patent and trademark prosecution. The VCC is presently administered by the Office of Patent Training and is available for authorized official business during normal business hours (8:30 AM - 5:00 PM, EST). The VCC equipment includes a high resolution document camera, direct computer input, VCR display capability, and a high speed, high resolution G-4 facsimile machine. The Patent and Trademark Depository Library Program office maintains a current list of all the off-site locations where a video conference may be held. At this time, use of the VCC will be limited to our partnership Patent and Trademark Depository Libraries (PTDLs) located at Sunnyvale, Calif. and the Great Lakes Patent and Trademark Center at the Detroit Public Library, which have duplicate video equipment. Customers wishing to utilize the facilities at the above noted PTDLs, rather than coming to the USPTO for a face-to-face interview, should contact the patent examiner and identify two alternative dates and times for a video conference. The patent examiner will then contact Office of Patent Training personnel who will, in turn, make all the arrangements. The customer will be notified as to the date and time of the video conference by Office personnel.

III.SCHEDULING AND CONDUCTING AN INTERVIEW

An interview should normally be arranged for in advance, as by letter, facsimile, electronic mail, telegram or telephone call, in order to insure that the primary examiner and/or the examiner in charge of the application will be present and available in the Office. When applicant is initiating a request for an interview, an “Applicant Initiated Interview Request” form (PTOL-413A) 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, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed “Applicant Initiated Interview Request” form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant’s representative. Applicants are encouraged to use form PTO-413A, however, the fact that applicant does not submit an “Applicant Initiated Interview Request” form is not, by itself, grounds for the examiner to deny a request for an interview. An interview in the Video Conference Center must be arranged at least 3 days in advance. When a second art unit is involved (Patentability Report), the availability of the second examiner should also be checked. See MPEP § 705.01(f). An appointment for interview once arranged should be kept. Many applicants and attorneys plan trips to Washington or off-site video conferencing locations in reliance upon such appointments. When, after an appointment has been made, circumstances compel the absence of the examiner or examiners necessary to an effective interview, the other party should be notified immediately so that substitute arrangements may be made.

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. Such a call and all other calls originated by the examiner should be made through the Office’s telephone system even though a collect call had been authorized. It is helpful if amendments and other papers, such as the letter of transmittal, include the complete telephone number with area code and extension, preferably near the signature of the writer.

The unexpected appearance of an attorney or applicant requesting an interview without any previous notice to the examiner may well justify his or her refusal of the interview at that time, particularly in an involved case.

An examiner’s suggestion of allowable subject matter may justify indicating the possibility of an interview to accelerate early agreement on allowable claims.

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. Thus, the attorney when presenting himself or herself for an interview should be fully prepared to discuss the issues raised in the Office action. When it is obvious that the attorney is not so prepared, an interview should not be permitted. It is desirable that the attorney or applicant indicate in advance what issues he or she desires to discuss at the interview by submitting, in writing, a proposed amendment. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment.

Examiners should avoid unnecessary interruptions during interviews with attorneys or inventors. In this regard, examiners should not take incoming telephone calls unless such are of an emergency nature. As appropriate, examiners should familiarize themselves with the status and existing issues in an application or reexamination proceeding before an interview.

The examiner should not hesitate to state, if such be the case, that claims presented for consideration at the interview require further search and study. Nor should the examiner hesitate to conclude an interview when it appears that no common ground can be reached nor when it becomes apparent that the application requires further amendment or an additional action by the examiner. However, the examiner should attempt to identify issues and resolve differences during the interview as much as possible.

It is the responsibility of both parties to the interview to see that it is not extended beyond a reasonable period, usually not longer than 30 minutes. It is the duty of the primary examiner to see that an interview is not extended beyond a reasonable period even when he or she does not personally participate in the interview.

During an interview with 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 his or her discretion. Too much time, however, should not be allowed for such interviews.

Examiners may grant one interview after final rejection. See MPEP § 713.09.

Where the reply to a first complete action includes a request for an interview, a telephone consultation to be initiated by the examiner or a video conference, or where an out-of-town attorney under similar circumstances requests that the examiner defer taking any further action on the case until the attorney’s next visit to Washington (provided such visit is not beyond the date when the Office action would normally be given), the examiner, as soon as he or she has considered the effect of the reply, should grant such request if it appears that the interview or consultation would result in expediting the case to a final action.

Where agreement is reached as a result of an interview, applicant’s representative should be advised that an amendment pursuant to the agreement should be promptly submitted. If the amendment prepares the case for final action, the examiner should take the case up as special. If not, the case should await its turn.

Consideration of a filed amendment may be had by hand delivery of a duplicate copy of the amendment.

Early communication of the results of the consideration should be made to applicant; if requested, indicate on attorney’s copy any agreement; initial and date both copies.

Although entry of amendatory matter usually requires actual presence of the original paper, examiner and technical support staff processing should proceed as far as practicable based on the duplicate copy. The extent of processing will depend on each amendment. For Image File Wrapper (IFW) processing, see IFW Manual section 3.5.

The substance of any interview, whether in person, by video conference, by electronic mail or by telephone must be made of record in the application. See MPEP § 502.03 and § 713.04.

IV.VIEWING OF VIDEO TAPES DURING INTERVIEWS

The U.S. Patent and Trademark Office has video tape equipment available for viewing video tapes from applicants during interviews with patent examiners.

The video tape equipment may use VHS and UHS (3/4-inch tape) cassettes.

Attorneys or applicants wishing to show a video tape during an examiner interview must be able to demonstrate that the content of the video tape has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application. Prior approval of viewing of a video tape during an interview must be granted by the supervisory patent examiner. Also, use of the room and equipment must be granted by the Office of Patent Training. The central training facility is located on the second floor of Madison West, 600 Dulany Street, Alexandria, VA 22314.

Requests to use video tape viewing equipment for an interview should be made at least 1 week in advance to allow the Office of Patent Training staff sufficient time to ensure the availability and proper scheduling of both a room and equipment.

Interviews using Office video tape equipment will be held only in the Office of Patent Training facilities. Attorneys or applicants should not contact the Office of Patent Training directly regarding availability and scheduling of video equipment. All scheduling of rooms and equipment should be done through and by the examiner conducting the interview. The substance of the interview, including a summary of the content of the video tape must be made of record in the application. See MPEP § 713.04.

V.EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW

Sometimes the examiner who conducted the interview is transferred to another Technology Center or resigns, and the examination is continued by another examiner. If there is an indication that an interview had been held, the second examiner should ascertain if any agreements were reached at the interview. Where conditions permit, as in the absence of a clear error or knowledge of other prior art, the second examiner should take a position consistent with the agreements previously reached. See MPEP § 812.01for a statement of telephone practice in restriction and election of species situations.

713.02 Interviews Prior to First Official Action[edit | edit source]

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 will not be permitted unless the examiner determines that such an interview would advance prosecution of the application. Thus, the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the “closest” prior art and an explanation as to how the broadest claim distinguishes over such references. See 37 CFR 1.133(a).

I. SEARCHING IN GROUP

Search in the Technology Center art unit should be permitted only with the consent of a primary examiner.

II. EXPOUNDING PATENT LAW

The U.S. Patent and Trademark Office cannot act as an expounder of the patent law, nor as a counselor for individuals.

713.03 Interview for "Sounding Out" Examiner Not Permitted[edit | edit source]

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.

713.04 Substance of Interview Must BeMade of Record[edit | edit source]

A complete written statement as to the substance of any face-to-face, video conference, electronic mail or telephone interview 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. See 37 CFR 1.133(b), MPEP § 502.03 and § 713.01.

37 CFR 1.133. Interviews.
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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.


37 CFR 1.2. Business to be transacted in writing.

All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

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 (PTOL-413B) that the examiner will provide a written summary. 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.

Examiners must complete an Interview Summary form PTOL-413 for each interview where a matter of substance has been discussed during the interview by checking the appropriate boxes and filling in the blanks. If applicant initiated the interview, a copy of the completed “Applicant Initiated Interview Request” form, PTOL-413A (if available), should be attached to the Interview Summary form, PTOL-413 and a copy be given to the applicant (or applicant’s attorney or agent), upon completion of the interview. If the examiner initiates an interview, the examiner should complete part I of the “Examiner Initiated Interview Summary” form, PTOL-413B, in advance of the interview identifying the rejections, claims and prior art documents to be discussed with applicant. The examiner should complete parts II and III of the

“Examiner Initiated Interview Summary” form at the conclusion of the interview. The completed PTOL- 413B form will be considered a proper interview summary record and it will not be necessary for the examiner to complete a PTOL-413 form. Discussions regarding only procedural matters, directed solely to restriction requirements for which interview recordation is otherwise provided for in MPEP § 812.01, or pointing out typographical errors in Office actions or the like, are excluded from the interview recordation procedures below. Where a complete record of the interview has been incorporated in an examiner’s amendment, it will not be necessary for the examiner to complete an Interview Summary form.

The PTOL-413 form provides for recordation of the following information:

(A)application number;

(B)name of applicant;

(C)name of examiner;

(D)date of interview;

(E)type of interview (personal, telephonic, electronic mail or video conference);

(F)name of participant(s) (applicant, attorney, or agent, etc.);

(G)an indication whether or not an exhibit was shown or a demonstration conducted;

(H)an identification of the claims discussed;

(I)an identification of the specific prior art discussed;

(J)an indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by attachment of a copy of amendments or claims agreed as being allowable). (Agreements as to allowability are tentative and do not restrict further action by the examiner to the contrary.);

(K)the signature of the examiner who conducted the interview;

(L)names of other U.S. Patent and Trademark Office personnel present.

The PTOL-413 form also contains a statement reminding the applicant of his or her responsibility to record the substance of the interview.

It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview in each case unless the interview was initiated by the examiner and the examiner indicated on the “Examiner Initiated Interview Summary” form, PTOL-413B, that the examiner will provide a written summary.

Where an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible to prevent any possible delays in the issuance of a patent. Where an examiner initiated interview directly results in the allowance of the application, the examiner may check the appropriate box on the “Examiner Initiated Interview Summary” form, PTOL-413B, to indicate that the examiner will provide a written record of the substance of the interview with the Notice of Allowability.

It should be noted, however, that the Interview Summary form will not be considered a complete and proper recordation of the interview unless it includes, or is supplemented by the applicant, or the examiner to include, all of the applicable items required below concerning the substance of the interview.

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 Internet e-mail contents 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, PTOL 413, is entered.

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 1-month time period to complete the reply under 37 CFR 1.135(c) where the record of the substance of the interview is in a reply to a nonfinal Office action.

EXAMINER TO CHECK FOR ACCURACY

Applicant’s summary of what took place at the interview should be carefully checked to determine the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability, it should be pointed out in the next Office letter. If the claims are allowable for other reasons of record, the examiner should send a letter setting forth his or her version of the statement attributed to him or her.

If the record is complete and accurate, the examiner should place the indication “Interview record OK” on the paper recording the substance of the interview along with the date and the examiner’s initials. For Image File Wrapper (IFW) processing, see IFW Manual.

713.05 Interviews Prohibited or Granted, Special Situations[edit | edit source]

For Saturday interviews, see MPEP § 713.01.

Except in unusual situations, no interview is permitted after the brief on appeal is filed or after an application has been passed to issue.

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. See MPEP § 105.

Interviews (MPEP § 713) 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 under the provisions of 37 CFR 1.14. 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 who are known to be the local representatives of the attorney in the application unless a power of attorney or Authorization to Act in a Representative Capacity (e.g., form PTO/SB/84) to them is of record in the particular application. See MPEP § 405. Note that pursuant to 37 CFR 10.57(c), a practitioner cannot authorize other registered practitioners to conduct interviews without consent of the client after full disclosure. Furthermore, a practitioner can not authorize a nonpractitioner to conduct interviews since this would be contrary to 37 CFR 10.47.

While a registered practitioner not of record may request a telephone interview (if the practitioner is authorized to do so by the applicant or the attorney of record), it is recommended that a facsimile transmission of a power of attorney be filed prior to the interview. Otherwise, the examiner will conduct the telephone interview with the Office’s file closed and work solely from the practitioner’s file, which may be difficult to do over the phone.

Interviews normally should not be granted unless the requesting party has authority to bind the principal concerned.

The availability of personal interviews in the “Conference Period,” which is the time between the filing of applicant’s thorough first reply and a concluding action by the examiner, for attorneys resident or frequently in the Washington, D.C. area is obvious. For others, more remote, telephone, electronic mail, or video conference interviews may prove valuable. However, present Office policy places great emphasis on telephone interviews initiated by the examiner to attorneys and agents of record. See MPEP § 408.

The examiner, by making a telephone call, may be able to suggest minor, probably quickly acceptable changes which would result in allowance. If there are major questions or suggestions, the call might state them concisely, and suggest a further telephone, electronic mail, or personal interview, at a prearranged later time, giving applicant more time for consideration before discussing the points raised.

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 INTERVIEWS

For attorneys remote from the Washington, D.C. area who prefer personal 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.

713.06 No Inter Partes Questions Discussed Ex Parte[edit | edit source]

The examiner may not discuss inter partes questions ex parte with any of the interested parties.

713.07 Exposure of Other Cases[edit | edit source]

Prior to an interview in the examiner’s room, the examiner should arrange his or her desk so that all files, drawings and other papers, except those necessary in the interview, are placed out of view. See MPEP § 101.

713.08 Demonstration, Exhibits, Models[edit | edit source]

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. See 37 CFR 1.91. However, a model or exhibit submitted by the applicant which complies with 37 CFR 1.91 would be made part of the application record . See MPEP § 608.03 and § 608.03(a). For Image File Wrapper (IFW) processing, see IFW Manual section 3.6.

If the model or exhibit is merely used for demonstration purpose during the course of the interview, it will not be made part of the record (does not comply with 37 CFR 1.91). A full description as to what was demonstrated/exhibited must be made of record in the application. See 37 CFR 1.133(b). Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with the approval of the supervisory patent examiner. It is presumed that the witnessing of the demonstration or the reviewing of the exhibit is actually essential in the developing and clarifying of the issues involved in the application.

713.09 Finally Rejected Application[edit | edit source]

Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. See MPEP § 714.13.

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. See MPEP § 706.07(f).

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[edit | edit source]

After an application is sent to issue, it is technically no longer under the jurisdiction of the primary examiner. 37 CFR 1.312. 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. Obviously an applicant is not entitled to a greater degree of consideration in an amendment presented informally than is given an applicant in the consideration of an amendment when formally presented, particularly since consideration of an amendment filed under 37 CFR 1.312 cannot be demanded as a matter of right.

Requests for interviews on cases where a notice of allowance has been mailed should be granted only with specific approval of the Technology Center Director upon a showing in writing of extraordinary circumstances.

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