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SFIPLA Dec. 14, 2010 at Ropers Majeski Kohn & Bentley Interviews for Compact Prosecution Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 1.

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Presentation on theme: "SFIPLA Dec. 14, 2010 at Ropers Majeski Kohn & Bentley Interviews for Compact Prosecution Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 1."— Presentation transcript:

1 SFIPLA Dec. 14, 2010 at Ropers Majeski Kohn & Bentley Interviews for Compact Prosecution Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 1

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3 Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 3 Just Three Topics Why to interview: Policy, training and rules Getting ready: effective lesson plans Doing it: an argument-free structure and a new tool

4 Interview because … Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 4

5 Top Down Policy Director Kappos, before House Judiciary Committee, May 5, 2010: Detailed training in efficient interview techniques, compact prosecution, and negotiations Number of hours of interviews in FY 2010 exceeds FY 2009 by more than 60% The average number of office action to disposition has dropped from 2.9 to a sustained level of approximately 2.3 Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 5

6 Years in the Making Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 6

7 Direction and Training 2009 Interview Acting Commissioner Peggy Focarino: Training plans include interview training, training on compact prosecution … Key practices: interviews held earlier in prosecution are a benefit to better focus on issues early in the examination process, interviews lead to early indication of allowable subject matter, interview usage later in prosecution may reduce unnecessary RCEs.

8 Training: Interviews … Interviews are an opportunity to explain rejections, discuss prior art, clarify positions, and resolve issues. Interviews can be useful at any stage of the prosecution of an application. Interviews can lead to a better understanding of Applicants invention. Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 8

9 Interviews (cont.) Interviews can bridge the knowledge gap between the Examiner and the Applicant and lead to better understanding each others position Interviews are an effective method for reaching agreement and advancing prosecution. Interviews promote compact prosecution Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 9

10 and Compact Prosecution Applicants and EXAMINERS should request interviews to advance prosecution –A telephone interview coupled with an Examiners Amendment is a preferred practice for placing the application in condition for allowance. (slide 5) Ex parte Quayle: The examiner should always attempt to advance prosecution and resolve remaining issues through a telephone interview. (slide 6) Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 10

11 Compact Prosecution (cont.) In Instances where the examiner is aware of a particular amendment that would clearly resolve an issue, SUGGEST IT! (Examiners without appropriate signatory authority should always verify the suggestion with whomever is signing the Office action). (slide 12) Avoid merely listing claim limitations and pointing to a large block of text in the reference.. (slide 13) Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 11

12 Rules Authorizing an Early Interview Accelerated Examination Enhanced First Action Interview Pilot MPEP 713.02 – Interviews Prior to First Official Action Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 12

13 Accelerated Exams Adopted in 2006 Mandatory interview before FOAM Patent issues in under a year Examination Support Document Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 13

14 Source: Wendy Garber, June 2, 2009 talk to Bio Partnership Mtg Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 14

15 Commissioner Stolls Stats FOAM allowances jumped from 3.9% to 25% to 56% Enhanced program across all TCs Informal adoption allowed Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 15

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17 MPEP 713.02 Interview Before FOAM Rev. 6, Sept 2007, encouraged Rev. 5, Aug 2006, will not be permitted unless Rev. 4, August 2005, request will not acknowledged … or granted Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 17

18 Summarizing the Rules Approach Initiation Starting point Examiner prep Limitations MPEP 713.02 Track in PAIR Informal, applicant calls As arranged Timing and willingness First Action Interview Pilot Opt-in One page from Examiner Per program Brevity of explanation Accelerated Exam File ESD Informal, examiner calls For compact prosecution ESD Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 18

19 Getting Ready to … Teach and learn Question and listen Argue as a last resort Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 19

20 Effective teaching overcomes: Writing, nerdiness, limited budgets and hindsight The broadest reasonable interpretation of awkward grammar Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 20

21 Background, objectives and advantage minimized Claims too abstract Special meanings from specification Novel element at end of the claim Writing Gets in The Way Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 21

22 Nerdiness Gets in The Way Geeks rule!!! Attorneys can be shy Easy to blame the other nerd Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 22

23 Budgets Gets in The Way Balanced disposition budgets control examiner behavior Good preparation takes time Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 23

24 Hindsight Gets in The Way Was the Examiner in high school when you applied? Were you in grade school when the Examiner started? Ungrounded broadest reasonable interpretation Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 24

25 Psyching out the Lesson Know your audience Figure out the lesson to teach –Before search –With art, before FOAM –After FOAM Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 25

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27 What lesson to teach? Getting behind 102/103 issues 103 issues Easy 101/112 issues Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 27

28 Sample Lesson Plans 102/103 Not close One element missing Elements recombined Claim misinterpreted Cannot tell how examiner is applying the ref Reference as a whole Selling a narrow distinction 103 combinations How combined? Combination defies common sense-hindsight Motivation leads to a different combination Destroying or changing principle of operation for primary reference Objective indicia Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 28

29 Getting Ready An agenda to make the examiners preparation productive Pictures Focus An amendment Arrange the interview Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 29

30 Patent Public Advisory Committee Annual Report 2010 User Experience and IT Tools During the recent public session of the PPAC, it was noted that the USPTO has accepted desktop collaboration as a tool for enhancing telephonic interviews and for reducing the need for hoteling Examiners to travel to the Office for interviews. It was reported at a recent meeting that several collaboration tools are being evaluated and that they permit Examiners to follow a presentation visually, during a telephonic interview. It was reported that Examiners will appreciate this tool as an effective adjunct in the interview process, particularly when crafting amended claim language. Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 30

31 Doing It

32 Structure from Interview Training Give the applicant an opportunity to explain the invention Openly discuss how inventive concepts are relayed or not relayed in the claims Discuss prior art and rejections. Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 32

33 Concrete Structure General background Figures from app Words of the claims Figures from refs Office action (Amendments at the beginning, middle or end) Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 33

34 The First Five Minutes Understanding your audience Getting the examiner to talk Three-way interview styles Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 34

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36 Adobe Connect Green Light! SPE Dave Wiley, April 30, 2010: As far as allowing other practitioners to use Adobe Connect, to my knowledge we have never discouraged or restricted any others from using the program, if other practitioners and patent examiners want to use the program then they can, we can not force either party to use them, but again they can if they wish. Ccs: Stoll, Focarino, Hirshfeld Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 36

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38 Demonstration Time Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 38

39 www.HMBay.com/talks Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 39

40 Wrapping Up Agreements need to be really agreed – youre talking to the judge Follow up promptly in writing Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 40

41 About the Speaker INTELLECTUAL PROPERTY ATTORNEYS 637 Main Street P.O. Box 366 Half Moon Bay, CA 94019 650.712.0340 Branch office in Santa Cruz www.HMBay.com Ernie Beffel –U Michigan, Industrial Engineering and Operations Research 78 (summa cum laude) –Stanford Law School 81 –Trial lawyer and partner, Hancock Rothert & Bushoft –Co-founder and partner, Haynes Beffel & Wolfeld Dec. 14, 2010SFIPLA Copyright Ernie Beffel Slide 41


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