Sudhanshu C. Pathak Resource Supervisor Denver Satellite Office USPTO United States Patent and Trademark Office Examiner Interview Practice NAPP Annual Meeting July 13, 2015

July Benefits of Interviews Facilitate a better understanding of the USPTO processes’, policies and procedures. Advance examination of applications once taken up in turn. Facilitate resolution of issues for timely disposition of an application Give applicants more options in regards to the amount of notice and procedure needed. Facilitate communications between the Office and the stakeholders.

3 Interview Time FY 2008 – FY 2014

4 Percent of Serial Disposals Having at Least One Interview by Month FY 2008 – FY 2015 (through January) 28.7% of Serial Disposals completed in January 2015 had at least one interview.

Influence of Interviews on Compliance Rate Based on random samples of over 52,000 Allowances and Final Rejections from FY 2005 – FY

Interview Preparation Requesting an interview – Be flexible with scheduling. – Give as much notice as possible. – Provide a detailed Agenda. – Types of interviews available: Telephonic In person Video conferencing (WebEx) 6

Interview Preparation Cont. 6 Requesting an Interview: 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. 37CFR Also see FFAI Pilot Program (below). Normally, one interview after final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal. 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. MPEP Also see AFCP 2.0 (below). Except in unusual situations, no interview is permitted after the submission of an appeal brief or after a notice of allowability for the application has been mailed. MPEP 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. MPEP While a registered practitioner not of record may request an interview (if the practitioner is authorized to do so by the applicant or the attorney of record), it is recommended that a power of attorney or authorization to act in a representative capacity be filed, preferably via EFS-Web, 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.

Interview Preparation Cont. 6 Agenda Useful content of a detailed Agenda may include: General intent and/or goal of interview Brief summary of arguments (if applicable) Applied references Evidence relied upon Proposed amendments

Interview Preparation Cont. Examiners receive annual training on various aspects of interview practice. – Preparation, recording and clarification. Examiners are encouraged to provide a detailed recording of the interview, whether or not an agreement with the examiner was reached. See MPEP All documents provided to the examiner including the agenda will be made of record in the application file. The Applicants are also encourage to provide a recording of the interview. – Interview tools – Promotion of interviews. Interviews are now available via video conferencing such as WebEx. 9

Interview with WebEx 10

11 How WebEx Works WebEx is a web-based service, so you can use it from any computer (Windows, Mac, Linux, or Solaris). No software needs to be downloaded to participate in an online WebEx meeting. You need a computer and a high- speed Internet connection is recommended. A telephone will be used to join the audio component of the meeting while a webcam may be used as part of the visual component. Audio Component Web/Visual Component

12 WebEx Interview Policy All video conference interviews MUST be hosted by the USPTO. Examiners are not permitted to join a video conference originating outside the USPTO. Examiners will establish the WebEx session for an interview and send invitations to all other parties.

13 WebEx Interviews Current practice: – Obtain written authorization from Applicant prior to sending Outlook/WebEx meeting invite (see MPEP § and ) Future: – We are looking into updating this policy.

14 Video Conferencing via WebEx WebEx Invitation

15 Open the containing the WebEx online meeting invitation and click on the link to join the visual component of the online meeting. Step 1: Click ed Link

16 Enter 'Your name' and ' address' in the Meeting Center window and click 'Join'. Step 2: Sign In

17 If an Add-On or Plug-In appears and you have administrative privileges to install the application, select 'Allow' or 'Download' to install and launch the WebEx Application. (Depending on which browser you are using, the dialog box may appear different.) Step 3: Allow plug-in

18 Step 4: Java Admin Option If Administrative privileges are not available, users can ‘Use Java’ on Internet Explorer or ‘Run a temporary application’ on Google Chrome and Mozilla Firefox.

19 Step 5: Call In To join the audio component of the online meeting, enter your 10 digit phone number in the Audio Conference Window and click on ‘Call Me’. WebEx will call the entered phone number.

20 Step 6: Answer Phone Your phone will ring. Answer it and when prompted, press '1' on the phone dial pad to enter the audio portion of the conference.

21 Step 7: Start Video To join the visual component of the online meeting, when the WebEx Meeting starts, click the ‘Start my video’ button next to your name in the participants list.

22 Conducting WebEx Interview Conducting the Video Conference - Presenter Designating a presenter The first person to arrive is made the presenter, but the Host can assign a Participant the Presenter’s role. 1.On the Participants panel, select a name to designate as the Presenter. 2.Click the Make Presenter button. 3.To reclaim the Presenter’s role, select your own name and click the Make Presenter button.

23 WebEx Interview – (Cont’d) Conducting the Video Conference - Sharing Sharing Files and Applications Share a File to present information that will not be edited. Share an Application to demonstrate software, edit a document, or train attendees on using an application. Click to expand the Share drop-down menu from the main Quick Start tab, or the Share drop-down menu; see Figures 16 and 17. Note: Desktop sharing is not available for external meetings (interviews) Note: File must be open for you to share it. Note: Participant must be Presenter to share

24 WebEx Interview – (Cont’d) Sharing Examples During an interview, an Examiner can share their application, view claims, or discuss a cited reference.

25 WebEx Interview – (Cont’d) Conducting the Video Conference - Sharing When viewing a document in full-screen mode, or when sharing an application or desktop, use the WebEx Sharing toolbar to access annotation tools. Hover the cursor over the sharing note at top center of the monitor to bring up the Control Panel; see Figure 18. The Annotate button will display annotation tools that can be used in conjunction with shared materials to call out specific elements; see Figure 19.

26 WebEx Interview – (Cont’d) Annotate Example During an interview, an Examiner can annotate a shared document, e.g., markup a copy of the claims. An Examiner can also use the pointer tool to e.g., show applicant where a claimed feature is not positively recited or point to where a claimed feature is taught in a reference.

27 Why Should You Interview Using WebEx? Availability. Share. Connect. Convenience.

28 WebEx Resources WebEx.com Website Provides many short “how to” instructional videos Examples: Use Sharing Share a File or Video Share a Whiteboard Share a Web Browser Use Annotation Tools Assignee Attendee Privileges Transfer My Host Role End a Meeting Advanced WebEx Tips

WebEx Training USPTO has conducted official WebEx training for Examiners in September Examiners have been WebEx certified. 29

30 Public Interview Room A Public Interview Room is a video conference room on each USPTO campus designated for Applicants to use to connect and collaborate with examiners that are working remotely or at a different USPTO campus. Applicant must reserve the room through the Examiner at least two business days prior to interview. A written authorization to communicate electronically prior to requesting to reserve a Public Interview Room is required (see MPEP § and ) Any documents to be shared by the applicant should be ed to the Examiner prior to the interview.

Public Interview Room 31

Full First Action Interview (FFAI )Pilot Program Promote personal interviews prior to issuance of a first Office action on the merits Advance examination of applications once taken up in turn Facilitate resolution of issues for timely disposition of an application Give applicants more options in regards to the amount of notice and procedure needed 32

33 Key Change in FFAI Pilot All utility applications are now eligible

34 FFAI Pilot Program Requirements Must be a non-reissue, non-provisional utility application under 35 USC 111(a) or national stage application under 35 USC 371 Must contain three or fewer independent claims and twenty or fewer total claims Must not contain any multiple dependent claims Must claim only a single invention Must not have a first Office action on the merits as of the date Applicant requests participation in program

35 Applicant will: Follow current restriction policy and practice –Except that applicant must elect without traverse to stay in the program Timely respond to the Pre-Interview Communication –A single one month (30 days) extension is available –A failure to timely respond is treated as a request not to have the interview Properly respond to the Pre-Interview Communication by filing one of the following: –Request not to have the interview; –“Applicant Initiated Interview Request” form (PTOL-413A) along with a proposed amendment and/or arguments via EFS-Web, and conduct the interview within 60 days from the filing of the Applicant Initiated Interview Request; or –Request not to have the interview AND submit a reply in accordance with 37 CFR Pre-Interview Procedures for FFAI

FFAI Benefits 36 Participants experienced many benefits including: 1.The ability to advance prosecution of an application; 2.Enhanced interaction between applicant and the examiner; 3.The opportunity to resolve patentability issues one-on- one with the examiner at the beginning of the prosecution process; and 4.The opportunity to facilitate possible early allowance.

Additional Information for FFAI 37.

38 One interview after prosecution has been closed is permitted Intended purpose of the interview should be presented Two purposes: –Place the application in condition for allowance –Place the application in better condition for appeal Purpose should not be to merely restate arguments of record After Final Consideration Pilot (AFCP 2.0) –Submit a request to participate –Submit an amendment to at least one independent claim that does not broaden the scope –Be willing to participate in an interview with the examiner of record Interviews After Final

After Final Consideration Pilot 2.0 The After Final Consideration Pilot 2.0 (AFCP 2.0) has been extended through September 30, To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. 39

After Final Consideration Pilot

After Final Consideration Pilot

After Final Consideration Pilot

After Final Consideration Pilot

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Stakeholder’s Survey A brief survey that provides feedback to the USPTO regarding Applicants’ experience with current interview practices during prosecution. The responses will assist in the identification of best practices and training needs for the office. 48

Stakeholder’s Survey Cont. 49

Provide Feedback 50

Questions? Thank you. 51