Examiner Interviews

Examiner Interviews
NAPP® 2009
The Nuts & Bolts of
Patent Prosecution Practice
July 18, 2009

Presented by:
Stan Antolin
Smith Moore Leatherwood LLP
300 N. Greene Street, Suite 1400
Greensboro, NC 27401
T: 336-378-5200
F: 336-378-5400

© 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.

Special Thanks to . . .

Nancy Pappas

for providing the materials
that served as the basis of
this presentation.


Types of Interviews

• Planned
• Unplanned

Prescheduled
A no-no

Unexpected
Telephonic – Restriction Requirements


Unexpected Interviews

• Telephonic restriction
requirements

Do you need to make
a decision on the
spot?
Can you change your
mind after you hang
up?


Unexpected Interviews

• Telephonic restriction requirements

Should you confirm your answer in writing?

Can I refuse without harming the future of the
relationship with the Examiner?


Planned Interviews

• Reasons for an interview

The Examiner’s position is not understood.

The Examiner appears to lack understanding of
the invention.


Planned Interviews

• Reasons for an interview

A physical demonstration
of a model would
demonstrate a subtle
difference hard to verbalize
or draw.

The Examiner seems to
have an incorrect legal
standard.


When?

• After receiving a first office action and before filing a
response.

• After final rejection, be prepared to advocate for the
necessity of the interview; an outline of topics to be
discussed or draft claims can be sent.


When?

• Never at the end
of the quarter!

• Choose a neutral
time for the
Examiner’s
schedule even if it
is telephonic.


Smith Moore Leatherwood LLP

In Person or Telephonic?
• How to decide

Cost

Number and types
of issues that need
to be resolved


In Person or Telephonic?
• How to decide

Urgency of needing to know where the Examiner’s
head “is at.”

Gut feeling that both you and the Examiner are on
very different pages and a face to face interview
would be better.


In Person

• Be prepared – know your case; prior art.

• Have a clear goal in mind before going.


In Person

• Plan on 30-60 minutes, no
longer.

• Don’t go with predetermined
notions, be prepared for
surprises – either good or
bad.


In Person

• If a preliminary summary has been delivered, realize that
the Examiner may not have reviewed it.

• Expect that possible supervisors may be present who
are not as familiar with the case as they should be.


When the Examiner’s Position is not Understood

• First let the Examiner state his position.

– However, prepare a series of questions before going
to the interview in order to clarify for yourself what you
do not understand.

• Be prepared to clarify the invention.

• Be prepared to meet with a wall that needs to be torn
down.


The Examiner Lacks Understanding of the
Invention

• Decide whether or not to bring the inventor, this can
work against you easily.

• Consider whether bringing a model or teaching tool
would help.


The Examiner Lacks Understanding of the
Invention

• BEFORE teaching, listen to the Examiner to determine
what they believe the invention to be.

• THEN teach the difference.


Overcoming Prior Art

• A model of the invention as well as a model of the prior
art may be useful for distinguishing the invention.

• Be prepared to offer to submit Declarations to support
novelty, non-obviousness, and/or §112 issues.

• Make sure that the combinations are in fact proper.


Points of Law

• Should you bother?


Pre-Interview Preparation

• Thoroughly review the specification and the prior art.

• Remember, you can send in proposed claim language
ahead of time – a draft.


Pre-Interview Preparation

• Thoroughly review the specification and the prior art.

• Remember, you can send in proposed claim language
ahead of time – a draft.

• Proposed experiments for distinguishing the invention
from the prior art can also be sent ahead of time.


How to Conduct the Interview

• Always be polite and friendly. If the inventor cannot be
trusted on this score, do not bring them.

• Let the Examiner explain their position.


How to Conduct the Interview

• Then if it is still unclear, go from there.

• Remember to thank the Examiner - Even if you still don’t
agree!


Remember, This is not a Fishing Expedition

• An Examiner will continue to
reject the case if he/she feels
that you are not enthusiastic
about it.

• Firmness with the Examiner
can be good but never talk
down or act superior.


Follow Up

• Reducing the interview to writing

Who does it?

How much should be written down?


Was the Interview a Success?

• Was allowable subject matter defined?

• Could you and the Examiner agree on claim language?


Was the Interview a Success?

• Do you understand the
Examiner’s position
better?

• Did you and the
Examiner agree to a
mutual work plan for
resolving the issues
left in the case?


Conclusions

• Examiner interviews can advance or slow successful
prosecution.

• Be prepared for the interview.


Conclusions

• Build a relationship with the Examiner –

Listen first.
Be polite.
Thank the Examiner for their time.

• Timing may be everything.


Thank you

Stan Antolin
stan.antolin@smithmoorelaw.com
T: 336-378-5516
F: 336-433-7591


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