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Law360, New York (July 25, 2013, 12:07 PM ET) — There is no getting around the fact that examiner interviews reduce the cost of patent prosecution. Consistent with this, the U.S. Patent and Trademark Office has implemented various programs urging examiner interviews in an effort to reduce pendency and improve patent quality. Thus, the question for patent practitioners should no longer be “Should we conduct an interview in this patent application?” but, “Why shouldn’t we conduct an interview in this case?”

The USPTO recently released results from a five-year study of examiner interview practice and determined that from fiscal year 2008 to fiscal year 2012, the percentage of examiner interviews conducted in an application has nearly doubled from about 15 percent to about 30 percent.[1] Further, another recent USPTO study revealed that conducting interviews reduced the occurrence of improper allowances and improper rejections by approximately 40 percent.[2]

Examiner interviews help reduce overall prosecution costs in at least two ways — by increasing the probability of an allowance, and by reducing the number of written responses required to obtain an allowance. If an applicant can avoid one office action in the prosecution of an application, the interview will likely have reduced the total prosecution cost of the application. Looking deeper into the byproducts of an examiner interview highlights many of the benefits of examiner interviews.

Most practitioners will recognize the primary advantages to interviewing an application, such as reaching agreements on allowable subject matter earlier in prosecution, educating the patent examiner on the nuances of the technology, and the ability to present multiple claim proposals for consideration by the examiner. These benefits not only reduce the pendency of the application, but assist in obtaining a patent itself by flushing out allowable subject matter that may not have been identified without the interview. Also, a reduced pendency from an examiner interview normally means a more compact prosecution and less potential estoppel.

Some advantages to examiner interviews may not be so evident. For example, an examiner interview can assist the applicant in realizing earlier on in prosecution that the examiner and the applicant will not reach a resolution. These “unsuccessful” interviews can still provide an overall benefit to the prosecution of the application by expediting the decision as to whether the case should be dropped or appealed.

Another less recognized benefit of an examiner interview may include jump-starting an application that is languishing in the patent office. For example, an examiner interview in an application with a long-pending request for continued examination may trigger an office action in that application. Finally, interviews can reduce the extent of explanation required in a written reply, thus reducing the time and cost to prepare the reply.

Consistent with these benefits, the USPTO has implemented various programs that encourage examiner interviews during patent prosecution. Interviews are now available at almost every stage of prosecution. Interviews can be conducted before a first office action, after a nonfinal office action, and after a final office action.

The First Action Interview Pilot (FAIP) Program enables applicants to receive an interview before receiving a first office action on the merits, which prior to the FAIP, was rarely granted. Instead of issuing an office action, examiners will issue a pre-interview communication citing relevant art and giving a short statement of proposed rejections. Upon receiving the pre-interview communication, an applicant schedules an interview and submits proposed amendments and/or arguments. After an interview is conducted, the examiner may either allow the pending claims or issue a first action interview office action that constitutes a first office action on the merits.

The first action allowance rate for applications in the FAIP Program is currently 30.2 percent, compared to 11.0 percent for new, noncontinuing applications.[3] This nearly threefold increase in first action allowances evidences the collaborative environment in which applicants and examiners can reach agreement on allowable subject matter early in the application process through examiner interviews.

The After Final Consideration Pilot (AFCP) Program grants examiners additional time to search and/or consider responses after a final rejection. Important under this program, examiners are encouraged to use interviews to discuss the results of their search, should any after-final response not place the application in condition for allowance. Examiners are allotted up to three additional hours for search, consideration, and interviewing applications under this program, which may increase examiners’ willingness to consider amendments and/or arguments after-final. This program is a significant movement away from the USPTO of the past where requests for examiner interviews after a final rejection were rarely granted.

The USPTO has also approved the use of video conferencing to foster more effective examiner interviews. This emergence of examiner interviews by video conferencing will help overcome some of the traditional shortcomings of telephonic interviews. Attempting to explain the nuanced differences of pending claims and prior art over the telephone can be a daunting task for a patent practitioner. In complex cases, in-person interviews were generally deemed to be the only effective approach. However, the associated travel required to conduct in-person interviews can significantly increase the cost of conducting such interviews.

However, as the USPTO has embraced video conferencing as an additional interview mechanism, practitioners can strike the balance between the effectiveness of an in-person interview with the cost advantages of a telephonic interview.

Examiner interviews provide numerous benefits to patent applicants. Interviews can be used to quickly ascertain allowable subject matter or determine an Examiner’s unwillingness to allow an application. Practitioners can use this information to better advise their clients and reduce prosecution costs. USPTO data also suggests that examiner interviews help reduce pendency and prevent erroneous communications from being issued; resulting in significant costs savings to patent applicants.

The USPTO is putting a significant emphasis on conducting examiner interviews in order to reduce pendency and promote compact prosecution. Patent practitioners would be wise to conduct examiner interviews to align their processes with the USPTO’s efforts.

–By Jameson Q. Ma and Roland G. McAndrews, Bookoff McAndrews PLLC

Jameson Ma and Roland McAndrews are attorneys in Bookoff McAndrews’s Washington, D.C., office.

The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] http://www.uspto.gov/about/advisory/ppac/20130314_PPAC_PatentOperations.pdf.

[2] http://www.uspto.gov/blog/director/entry/interviews_and_patent_quality.

[3] http://www.uspto.gov/dashboards/patents/main.dashxml (as of May 2013).

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