Question 1

Who can an examiner contact for interviews regarding a patent application?

Accepted Answer

According to the MPEP, an examiner can contact the patent practitioner of record in the application for interviews. The MPEP states:

When the examiner believes the progress of the application would be advanced by an interview, the examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 713) and suggest a telephonic, personal, or video conference interview.

It's important to note that registered attorneys or agents not of record should not be contacted for certain actions, such as restriction requirements or approval of examiner's amendments.

Question 2

When should an interview be granted during patent examination?

Accepted Answer

An interview should be granted when it can contribute to the progress of the patent application. According to MPEP 713: "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."

This means interviews are particularly useful when they can:

Help develop or clarify issues in the application
Advance the prosecution of the application
Identify patentable subject matter

To learn more:

Question 3

What should I prepare for a patent interview with an examiner?

Accepted Answer

To prepare for a patent interview with an examiner, consider the following:

Be fully prepared to discuss issues raised in the Office action.
Submit an agenda indicating issues you want to discuss.
Prepare a proposed amendment or argument in writing.
Familiarize yourself with the status and existing issues in the application.
Be prepared to keep the interview within a reasonable time frame (usually 30 minutes).

The MPEP advises: "It is desirable that the attorney, agent, or applicant submit an agenda which indicates in advance what issues they desire to discuss at the interview by submitting, in writing, a proposed amendment or argument. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment."

To learn more:

Question 4

What should be discussed in an interview prior to first official action in patent examination?

Accepted Answer

An interview prior to first official action in patent examination can cover several important topics. According to MPEP 713.02, the following subjects may be discussed:

The invention and its relation to the prior art
Potential rejections or objections that may arise
Possible amendments to define the invention over the prior art
Any other matters that could expedite prosecution

The MPEP emphasizes: 'The examiner's suggestions should be considered carefully by the applicant or attorney/agent before deciding the question of agreement or disagreement.' This highlights the importance of thoughtful consideration of any suggestions made during the interview.

It's also worth noting that the interview provides an opportunity for the applicant to clarify any aspects of the invention that may not be clear from the written application, potentially preventing misunderstandings that could lead to unnecessary rejections.

To learn more:

Question 5

What is the purpose of interviews prior to first Office action in patent applications?

Accepted Answer

Interviews prior to the first Office action in patent applications serve several important purposes:

To discuss and clarify the invention and claims
To identify and resolve potential issues early in the examination process
To expedite prosecution by addressing concerns before formal Office actions
To establish a better understanding between the examiner and the applicant

As stated in MPEP 713.02: 'Interviews that are solely for the purpose of sounding out the examiner ... should not be permitted.' This emphasizes that interviews should have a substantive purpose related to advancing prosecution.

To learn more:

Question 6

What is the purpose of interviews in patent prosecution?

Accepted Answer

Interviews play a crucial role in patent prosecution by:

Improving mutual understanding of specific issues in an application
Bridging the gap between examiners and applicants on substantive matters
Advancing prosecution and identifying patentable subject matter

As stated in MPEP 713: "Discussions between an applicant and an examiner are often indispensable to advance the prosecution of a patent application." This underscores the importance of interviews in the patent examination process.

To learn more:

Question 7

What is the confidentiality requirement for unpublished patent applications?

Accepted Answer

Unpublished patent applications are subject to confidentiality requirements under 35 U.S.C. 122(a). MPEP 405 addresses this in the context of interviews:

However, an interview concerning an application that has not been published under 35 U.S.C. 122(b) with an attorney or agent not of record who obtains authorization through use 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).

This means that for unpublished applications, the USPTO will only discuss information provided by the authorized attorney or agent to maintain confidentiality.

Question 8

What are the requirements for using video conferencing for patent interviews?

Accepted Answer

Video conferencing for patent interviews must adhere to specific requirements as outlined in MPEP 713.01:

All video conferences must originate or be hosted by USPTO personnel.
Examiners cannot conduct interviews via video conferences hosted by applicants or third parties.
The examiner assigned to the application should coordinate the video conference using USPTO web-based collaboration tools.
Written authorization from the applicant is preferred before scheduling a video conference.
Oral authorization is sufficient but limited to arranging the video conference interview.

The MPEP states: "All video conferences for interviews MUST originate or be hosted by USPTO personnel. Examiners may not conduct interviews via video conferences hosted by applicants or third parties."

To learn more:

Question 9

What are the requirements for conducting video conference interviews in patent applications?

Accepted Answer

What are the requirements for conducting video conference interviews in patent applications?

Video conference interviews in patent applications must adhere to specific requirements set by the USPTO. According to MPEP 713.01(III):

"Video conferencing is available for interviews. All video conferencing interviews must be hosted by USPTO personnel. If applicant wishes to host a video conference interview (as opposed to a video conference interview hosted by USPTO personnel), the examiner may instead offer to hold the interview via telephone or in-person."

Key points to remember:

Video conferences must be hosted by USPTO personnel
Applicants cannot host video conference interviews
If an applicant requests to host, examiners may offer telephone or in-person alternatives

This requirement ensures security and consistency in the interview process for patent applications.

To learn more:

Question 10

What are the limitations on interviews prior to first Office action in patent applications?

Accepted Answer

While interviews prior to the first Office action can be beneficial, there are certain limitations and considerations:

Interviews solely to 'sound out' the examiner are not permitted
The examiner may require the applicant to provide a written statement of the substance of the interview
Complex technical subject matter may require a formal Office action before an effective interview can be conducted
The examiner has discretion in granting interview requests based on the circumstances

MPEP 713.02 states: 'The examiner's suggestion of allowable subject matter may justify indicating the possibility of an interview to accelerate early agreement on allowable claims.' This highlights that interviews are most effective when there's potential for substantive progress in the application.

To learn more:

Question 11

What are the general guidelines for conducting interviews in patent applications?

Accepted Answer

The general guidelines for conducting interviews in patent applications are outlined in MPEP 713.01. Key points include:

Interviews must be conducted on Office premises and within Office hours, as designated by examiners.
Interviews for discussing patentability typically won't occur before the first Office action, unless it's a continuing or substitute application.
Face-to-face interviews may be accomplished via video conferencing or in-person.
In-person interviews should normally be granted and conducted on Office premises during normal business hours.
Video conferencing interviews should be offered when in-person meetings are not possible.

As stated in the MPEP: "A request for a face-to-face interview will normally be granted. Other times, a telephone interview provides an appropriate level of interaction."

To learn more:

Question 12

How can I schedule an interview with a patent examiner?

Accepted Answer

To schedule an interview with a patent examiner, you can follow these steps:

Use the USPTO's Automated Interview Request (AIR) Form at www.uspto.gov/patent/uspto-automated-interview-request-air-form.html (recommended).
Alternatively, contact the examiner by letter, facsimile, electronic mail, telephone, or using the "Applicant Initiated Interview Request" form (PTOL-413A).
Provide the following information:
- Participants of the interview
- Proposed date of the interview
- Communication mode (e.g., personal, telephonic, or video conference)
- Brief description of the issues to be discussed

As stated in MPEP 713.01: "An interview should be arranged in advance to insure that the primary examiner and/or the examiner in charge of the application will be available."

To learn more:

Question 13

How can a patent applicant request an interview before the first Office action?

Accepted Answer

To request an interview before the first Office action, a patent applicant should follow these steps:

File a properly executed written authorization of internet communications (e.g., Form PTO/SB/439)
Submit an Applicant Initiated Interview Request Form (PTOL-413A)
Include a brief description of the issues to be discussed
Wait for the examiner's response to schedule the interview

According to MPEP 713.02, 'Prior to filing the request, the applicant should ensure that an authorization for internet communications is filed.' This is crucial for facilitating efficient communication with the examiner.

To learn more:

Question 14

Can patent examiners suggest claim amendments during interviews?

Accepted Answer

Yes, patent examiners can suggest claim amendments during interviews. The MPEP 713.01 states:

If the examiner determines that agreement can be reached with respect to the allowability of at least some claims, the examiner may suggest a possible amendment to the attorney or agent.

However, it's important to note that while examiners can suggest amendments, they should not rewrite claims for the applicant. The final responsibility for the content of the claims remains with the applicant or their representative.

To learn more:

Question 15

Can I show a video during a patent interview with an examiner?

Accepted Answer

Yes, you can show a video during a patent interview with an examiner, but there are specific guidelines to follow:

You must demonstrate that the video content is relevant to an outstanding issue in the application.
The video should advance the prosecution of the application.
If the video format is not compatible with USPTO equipment, you should bring the necessary equipment to display it.
The substance of the interview, including a summary of the video content, must be made of record in the application.

As stated in MPEP 713.01: "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."

To learn more:

Question 16

Can an examiner suggest claim amendments during an interview prior to first official action?

Accepted Answer

Yes, an examiner can suggest claim amendments during an interview prior to the first official action. The MPEP 713.02 states:

'In appropriate circumstances, the examiner may suggest a reasonable number of potential amendments which, if presented, would appear to overcome the apparent rejections. This may be done in the spirit of a constructive approach to advance prosecution of the application.'

However, it's important to note that:

The examiner's suggestions are not binding
The applicant is not obligated to accept these suggestions
Any amendments should be carefully considered by the applicant and their legal representative

This practice is intended to facilitate efficient prosecution and potentially resolve issues before the first official action is issued.

To learn more:

Question 17

Can a third party conduct an interview or take action in a patent application?

Accepted Answer

Generally, third parties are not permitted to conduct interviews or take actions in patent applications. The MPEP clearly states:

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, is considered a violation of 37 CFR 11.18 and may result in disciplinary action if done by a practitioner.

This means that only authorized representatives (such as registered attorneys or agents with proper authorization) can conduct interviews or take actions on behalf of the applicant. Third parties attempting to do so may face disciplinary action, especially if they are registered practitioners.

For more information on disciplinary action, visit: disciplinary action.

For more information on patent interviews, visit: patent interviews.

Patent Law FAQ

Here’s the complete FAQ:

MPEP 400 - Representative of Applicant or Owner (3)

Who can an examiner contact for interviews regarding a patent application?

What is the confidentiality requirement for unpublished patent applications?

Can a third party conduct an interview or take action in a patent application?

MPEP 405 - Interviews With Patent Practitioner Not of Record (2)

What is the confidentiality requirement for unpublished patent applications?

Can a third party conduct an interview or take action in a patent application?

MPEP 408 - Interviews With Patent Practitioner of Record (1)

Who can an examiner contact for interviews regarding a patent application?

Patent Law (3)

Who can an examiner contact for interviews regarding a patent application?

What is the confidentiality requirement for unpublished patent applications?

Can a third party conduct an interview or take action in a patent application?

Patent Procedure (3)

Who can an examiner contact for interviews regarding a patent application?

What is the confidentiality requirement for unpublished patent applications?

Can a third party conduct an interview or take action in a patent application?