713-Interviews

713 Interviews [R-07.2022]
Discussions between an applicant and an examiner are often indispensable to
advance the prosecution of a patent application. Generally, interviews that improve the
mutual understanding of specific issues in an application should be promoted. Properly
conducted, an interview can bridge the gap between an examiner and an applicant with regard
to the substantive matters at issue in an application. Interviews often help to advance
prosecution and identify patentable subject matter. The applicant and the examiner should
consider the advantages of conducting an interview to advance the prosecution of a
particular patent application. Positions presented during an interview should be advanced
with decorum and courtesy.
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.
Both applicants and examiners should understand that interview time is limited for both,
and therefore they should use the interview time efficiently. Both parties should ensure
the interview does not extend beyond a reasonable time and minimize interruptions during
the interview. Applicants and examiners should facilitate the grouping of interviews where
effective.
All discussions between the applicant/practitioner and the
examiner regarding the merits of a pending application will be considered an interview and
are to be made of record. This includes any and all records or communications received in
connection with the interview via any communication mode. This policy and other interview
tips are detailed in the Interview Best Practices document which is available at
www.uspto.gov/InterviewPractice . Where an electronic record is created
as part of the interview, e.g., a series of electronic messages, a copy of the electronic
record is to be made of record in the application. Where an electronic record is not
created, a summary of the interview must be made of record.
713.01 General Policy, How Conducted [R-07.2022]
37 CFR 1.133 Interviews.
(a)
(1) Interviews with examiners concerning applications and
other matters pending before the Office must be conducted on Office
premises and within Office hours, as the respective examiners may
designate. Interviews will not be permitted at any other time or place
without the authority of the Director.
(2) 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.
(3) The examiner may require that an interview be scheduled
in advance.
(b) In every instance where reconsideration is requested in view of
an interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed by the
applicant. An interview does not remove the necessity for reply to Office
actions as specified in §§ 1.111 and 1.135.
I. WHERE AND WHEN TO CONDUCT INTERVIEWS
i) Face-to-face interviews may be accomplished via
video conferencing or in-person. The physical location of either party
participating in an interview should not limit the USPTO’s ability to hold
face-to-face interviews. A request for a face-to-face interview will normally
be granted. Other times, a telephone interview provides an appropriate level of
interaction.
ii) In-person interviews with the examiner should
normally be granted. In-person interviews must be conducted on the Office
premises, such as in an examiner’s office, a conference room, an interview room
or a video conference center, and should be held during normal business hours
of 8:30 a.m. – 5:00 p.m. Monday through Friday.
iii) Interviews other than in-person interviews should
be held during normal business hours and may also be held during mutually
agreed upon non-traditional business hours, such as Saturday and evening
hours.
iv) When an examiner is working remotely from a USPTO
campus, there may not be an opportunity to have an in-person interview. The
examiner shall accommodate an applicant, attorney, or agent’s preference for an
interview via telephone or electronic communication using USPTO web-based
collaboration tools, consistent with the special requirements of section II.
below. Alternatively, an applicant, attorney, or agent may request to have an
interview on a USPTO campus while the examiner is remotely participating via
the phone or video conference. In this instance, appropriate arrangements will
be made on the USPTO campus for equipment and/or Internet access to facilitate
the interview. Appropriate USPTO representative may be present with the
applicant during the on campus interview.
v) Any Examiner may, with the applicant’s consent,
conduct an interview by video conferencing using the web-based collaboration
tools provided by the Office.
vi) Examiners who normally work remotely should
arrange to hold an interview on campus if the timing can be mutually agreed
upon with the applicant. In special situations the examiner will be required to
travel to campus for an in-person interview. The decision on special situations
will be made at the TC Director level or higher as to whether the examiner of
record or another USPTO representative will be on campus for the interview. A
hoteling examiner within the local commuting area of a satellite office may use
that satellite office for in-person or video conference interviews.
vii) Examiners working on campus may hold interviews
in-person, telephonically, or via video conference. Examiners may receive
requests from an applicant for an interview using video conferencing. Such
requests should normally be granted. See MPEP § 713.01, subsection III
below. Telework does not prevent examiners from conducting interviews via video
conference or telephonically from their approved alternate worksite.
II. SPECIAL REQUIREMENTS FOR USING INTERNET COMMUNICATIONS
Internet email, instant message system, or video conferencing shall
NOT be used to conduct an exchange or communications similar to those exchanged
during telephone or personal interviews unless authorization from the applicants or
an attorney/agent of record has been given to use Internet communications. See
MPEP §
502.03.
A. Written Authorization
The following is a sample written authorization
which may be used by applicant:
“Recognizing that Internet communications are not
secure, I hereby authorize the USPTO to communicate with the undersigned and
practitioners in accordance with 37 CFR 1.33 and
37 CFR
1.34 concerning any subject matter of this application by
video conferencing, instant messaging, or electronic mail. I understand that a
copy of these communications will be made of record in the application
file.”
The Internet authorization must be submitted on a
separate paper to be entitled to acceptance in accordance with 37 CFR
1.4(c). The separate paper will facilitate processing and
avoid confusion.
B. Oral Authorization
The best practice is to have a written authorization
of record in the file. However, an oral authorization from the
applicant/practitioner is sufficient for video conferencing interviews. The oral
authorization is limited to the arrangement of video conference interview
(including the meeting invitation) and does not extend to other communications
regarding the application. The examiner should note on the record the details of
the oral authorization in the interview summary or in a separate
communication.
III. VIDEO CONFERENCING
i) A video conference is an electronic meeting,
using USPTO web-based collaboration tools, to visually interact and collaborate
with people anywhere in real time.
ii) 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. The examiner
assigned to the subject application should coordinate the video conference
using USPTO web-based collaboration tools.
iii) When an applicant requests a video conference
with an examiner, the request should normally be granted. When applicants
request an in-person interview but there is not an opportunity for both parties
to be on the same USPTO campus at a mutually agreed upon time, a video
conference should be offered. All examiners, regardless of worksite location,
should offer and hold interviews via video conferencing when appropriate.
iv) Video conferencing should be conducted consistent
with the special procedure of subsection II above. Authorization from the
applicant, preferably written, should be obtained prior to scheduling and
setting up a video conference. See MPEP § 502.03.
IV. SCHEDULING AND CONDUCTING AN INTERVIEW
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. Use of
the USPTO’s Automated Interview Request (AIR) Form at www.uspto.gov/patent/uspto-automated-interview
-request-air-form.html is encouraged, but in the alternative, the
examiner may be contacted by letter, facsimile, electronic mail, telephone or the
"Applicant Initiated Interview Request" form (PTOL-413A) to schedule the interview.
The AIR form or the PTOL-413A form may be submitted to the examiner prior to the
interview in order to permit the examiner to prepare in advance and to focus on the
issues to be discussed. These forms should identify the participants of the
interview, the proposed date of the interview, the communication mode (e.g.,
personal, telephonic, or video conference), and should include a brief description of
the issues to be discussed. Upon completion of the interview, a copy of the completed
Interview Summary form (PTOL-413/413b) should be given to the applicant (or
applicant’s attorney or agent) along with any attachments.
When a second art unit is involved, such as in the case
where approval of a Patentability Report is necessary, the availability of the second
examiner should also be checked. See MPEP §§ 705 - 705.01(f). An
appointment for interview once arranged should be kept by examiner and applicant,
attorney, or agent. When, after an appointment has been made, circumstances compel
the absence of a party necessary to an effective interview (e.g., applicant,
applicant’s representative, or examiner), the other party should be notified
immediately so that substitute arrangements may be made.
When a telephone call is received by an examiner and it becomes
evident that a lengthy discussion will ensue or that the examiner needs time to
restudy the situation, the call should be terminated with an agreement that the
examiner will call back at a specified time. Such a call and all other calls
originated by the examiner should be made by use of the Office’s equipment and
software.
An examiner’s suggestion of allowable subject matter
may justify indicating the possibility of an interview to accelerate early agreement
on allowable claims.
The unexpected appearance of an attorney, agent, or applicant
requesting an interview without any previous notice may well justify the examiner’s
refusal of the interview at that time, particularly in an involved case.
An interview should be had only when the nature of the case is such
that the interview could serve to develop and clarify specific issues and lead to a
mutual understanding between the examiner and the applicant, and thereby advance the
prosecution of the application.
Thus, the attorney or agent when presenting himself or
herself for an interview should be fully prepared to discuss the issues raised in the
Office action. When it is obvious that the attorney or agent is not so prepared, the
interview should be rescheduled. 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.
In order to have an effective interview, both parties
should avoid unnecessary interruptions. Do not take incoming telephone calls, emails,
or text messages unless an emergency. All parties participating in an interview
should familiarize themselves with the status and existing issues in an application
or reexamination proceeding before an interview.
The examiner should not hesitate to state, when appropriate, that
claims presented for discussion at an interview would require further search and
consideration. Nor should the examiner hesitate to conclude an interview when it
appears that no common ground can be reached or when it becomes apparent that the
application requires further amendment or an additional action by the examiner.
However, the examiner should attempt to identify issues and resolve differences
during the interview as much as possible.
It is the responsibility of all participants to see that the
interview is not extended beyond a reasonable period, usually 30 minutes. It is the
duty of the primary examiner to see that an interview is not extended beyond a
reasonable period.
During an interview with a pro se applicant (i.e., an applicant who
is prosecuting his or her own case and is not familiar with Office procedure), the
examiner may make suggestions that will advance the prosecution of this case; this
lies wholly within the examiner’s discretion. Excessive time, however, should not be
allowed for such interviews.
Examiners should inspect all incoming papers. See
MPEP §
714.05. Where a complete reply to a first action includes a
request for an interview, the examiner, after consideration of the reply, should
grant such an interview request if it appears that the interview would result in
expediting the allowance of the application.
Where agreement is reached as a result of an interview, applicant or
applicant’s attorney or agent, as appropriate, should be advised that an amendment
pursuant to the agreement should be promptly submitted.
A duplicate copy of a filed amendment and/or remarks if
filed in paper may be sent to the examiner in order to facilitate early
consideration.
A duplicate copy is unnecessary when the amendment
and/or remarks are filed via the USPTO patent electronic filing system as the
examiner will be able to quickly access such documents. See the EFS-Web Guidance and
Resources page of the Office website (www.uspto.gov/patents/apply/ applying-online/about-efs-web) for
additional information. See also MPEP § 502.05.
The substance of any interview must be made of record in the
application. See MPEP
§§ 502.03 and 713.04. A paper copy of any written
communications or transcripts MUST be made and placed in the patent application file
as required by the Federal Records Act in the same manner as an Examiner Interview
Summary Form is entered.
Examiners may grant one interview after final
rejection. See MPEP §
713.09.
V. VIEWING OF VIDEO DURING INTERVIEWS
The USPTO has equipment available for viewing video from applicants
during interviews with patent examiners.
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. If the video that applicant would like to display during the
interview is in a format that USPTO equipment cannot display, the applicant should
also bring to the interview the equipment necessary to display the video. The
substance of the interview, including a summary of the content of the video must be
made of record in the application. See MPEP § 713.04.
VI. EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW
Sometimes the examiner who conducted the interview is transferred to
another Technology Center or resigns, and the examination is continued by another
examiner. If there is an indication that an interview had been held, the second
examiner should ascertain if any agreements were reached at the interview. Where
conditions permit, as in the absence of a clear error or knowledge of other prior
art, the second examiner should take a position consistent with the agreements
previously reached. See MPEP § 812.01 for a statement of
telephone practice in restriction and election of species situations.
VII. COLLABORATION TOOLS
Collaboration tools are the web-based tools provided by
the USPTO and include multiple electronic communication tools such as video
conferencing equipment and software. Examiners must only use USPTO-supplied equipment
and software for interviews. All video conferences for interviews MUST originate or
be hosted by USPTO personnel.
713.02 Interviews Prior to First Official Action [R-07.2022]
A request for an interview prior to the first Office action is
ordinarily granted in continuing or substitute applications. In all other applications,
an interview before the first Office action is encouraged where the examiner determines
that such an interview would advance prosecution of the application. Thus, the examiner
may require that an applicant requesting an interview before the first Office action
provide a paper that includes a general statement of the state of the art at the time of
the invention, an identification of no more than three (3) references believed to be the
“closest” prior art, and an explanation as to how the broadest claim distinguishes over
such references. See 37 CFR 1.133(a). Applicants seeking prioritized examination
should be prepared to participate in an interview with the examiner. See
MPEP §
708.02(b).
I. SEARCHING IN GROUP
Seeking search help in the Technology Center art unit should be
permitted only with the consent of a primary examiner.
II. EXPOUNDING PATENT LAW
The U.S. Patent and Trademark Office cannot act as an expounder of
the patent law, nor as a counselor for individuals.
Interviews that are solely for the purpose of “sounding out” the
examiner, as by a local attorney acting for an out-of-town attorney, should not be
permitted when it is apparent that any agreement that would be reached is conditional
upon being satisfactory to the principal attorney.
713.04 Substance of Interview Must Be Made of Record [R-07.2022]
A complete written statement as to the substance of any interview
(including any electronic communication that discussed the merits of an application)
must be made of record in the application, whether or not an agreement with the examiner
was reached at the interview. The requirement may be satisfied by submitting a
transcript generated during an electronic communication exchange. See 37 CFR 1.133(b)
and MPEP §§
502.03 and 713.01.
37 CFR 1.133 Interviews.
*****
(b) In every instance where reconsideration is requested in view of
an interview with an examiner, a complete written statement of the reasons
presented at the interview as warranting favorable action must be filed by the
applicant. An interview does not remove the necessity for reply to Office
actions as specified in §§ 1.111 and 1.135.
37 CFR 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be
transacted in writing. The personal attendance of applicants or their attorneys or
agents at the Patent and Trademark Office is unnecessary. The action of the Patent
and Trademark Office will be based exclusively on the written record in the Office.
No attention will be paid to any alleged oral promise, stipulation, or understanding
in relation to which there is disagreement or doubt.
The action of the U.S. Patent and Trademark Office cannot be based
exclusively on the written record in the Office if that record is itself incomplete
through the failure to record the substance of interviews. Accordingly, examiners must
complete an Interview Summary form for each interview where a matter of substance has
been discussed during the interview. For an applicant-initiated interview, a complete
written statement as to the substance of the interview must be made of record in the
application file in the reply to an outstanding action or within the set period if no
reply is outstanding. It is the responsibility of the applicant to make the substance of
the interview of record in the application file, and it is the examiner’s responsibility
to see that such a record is made and to correct material inaccuracies which bear
directly on the question of patentability. For an examiner-initiated interview, it is
the responsibility of the examiner to make the substance of the interview of record
either on an Interview Summary form or, when the interview results in allowance of the
application, by incorporating a complete record of the interview in an examiner’s
amendment. The examiner should be sure to indicate whether it is necessary for the
applicant to submit a substance of the interview.
An examiner may use form PTOL-413/413b to record the
substance of an interview. A sample Interview Summary form (PTOL-413/413b) for an
applicant-initiated interview is reproduced below.
A sample Interview Summary form (PTOL-413/413b) for an
examiner-initiated interview is reproduced below.
See subsection I below for a list of the items to be included for
complete and proper recordation of an interview. Discussions regarding only procedural
matters, directed solely to restriction requirements for which interview recordation is
otherwise provided for in MPEP § 812.01, or pointing out typographical errors in Office
actions or the like, are excluded from the interview recordation procedures.
For both applicant-initiated and examiner-initiated
interviews, it is recommended the examiner begin completing an Interview Summary form in
advance of the interview by identifying the rejections, claims and prior art documents
to be discussed. The examiner should complete the “Issues Discussed” portion of the
Interview Summary form at the conclusion of the interview. Upon completion of the
interview, a copy of the Interview Summary form (PTOL-413/413b) should be given to the
applicant (or applicant’s patent practitioner) along with any attachments.
The Interview Summary form shall include the date the interview was held
and the substance of the interview shall be properly recorded. The applicant or the
applicant’s patent practitioner, as appropriate, should be provided with a copy of the
Interview Summary form either at the end of the interview or by mailing it to the
applicant’s correspondence address either with or prior to the next official
communication. A copy of the form may be faxed or, if the Office has appropriate
authorization to conduct communications via the Internet, a copy of the form may be
emailed to applicant (or applicant’s attorney or agent) at the conclusion of the
interview. If additional correspondence from the examiner is not likely before an
allowance or if other circumstances dictate, the Interview Summary form should be mailed
promptly after the interview rather than with the next official communication.
The Interview Summary form provides for recordation of the following
information:
In the case of an applicant-initiated interview, the Interview Summary
form will include a reminder indicating it is the applicant’s responsibility to record
the substance of the interview in the reply to an outstanding action or within the set
period if no reply is outstanding. It is desirable that the examiner also orally remind
the applicant of the applicant’s obligation to record the substance of the interview in
each case where the interview was not initiated by the examiner. Where an interview
initiated by the applicant results in the allowance of the application, the applicant is
advised to file a written record of the substance of the interview as soon as possible
making of record the items listed below to prevent any possible delays in the issuance
of a patent.
I. ITEMS REQUIRED IN A COMPLETE AND PROPER SUMMARY
The complete and proper recordation of the substance of any interview
should include or be supplemented to include at least the following applicable
items:
(A) a brief description of the nature of any exhibit shown or any
demonstration conducted;
(B) identification of the claims discussed;
(C) identification of specific prior art discussed;
(D) identification of the principal proposed amendments of a
substantive nature discussed (may refer to a copy attached to the Interview
Summary form completed by the examiner);
(E) the general thrust of the principal arguments of the applicant
and the examiner should also be identified, even where the interview is
initiated by the examiner. The identification of arguments need not be lengthy
or elaborate. A verbatim or highly detailed description of the arguments is not
required. The identification of the arguments is sufficient if the general
nature or thrust of the principal arguments can be understood in the context of
the application file. Of course, the applicant may desire to emphasize and
fully describe those arguments which they feel were or might be persuasive to
the examiner;
(F) a general indication of any other pertinent matters discussed;
(G) if appropriate, the general results or outcome of the
interview; and
(H) in the case of an interview via electronic mail, a copy of the
contents exchanged over the Internet MUST be made and placed in the patent
application file as required by the Federal Records Act in the same manner as
an Examiner Interview Summary form is entered.
II. EXAMINER TO CHECK FOR
ACCURACY
Examiners are expected to carefully review the applicant’s record of
the substance of an interview. If the record is not complete or accurate, the
examiner may give the applicant a 2-month time period to complete the reply under
37 CFR
1.135(c) where the record of the substance of the interview is
in a reply to a non-final Office action.
¶ 7.84 Amendment Is Non-Responsive to Interview
The reply filed on [1] is not fully responsive to the prior
Office action because it fails to include a complete or accurate record of the substance of
the [2] interview. [3] Since the above-mentioned reply appears to be
bona fide, applicant is given a shortened statutory period of TWO
(2) MONTHS from the mailing date of this notice within which to supply the omission
or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED
UNDER 37 CFR
1.136(a) but in no case can any extension carry the date for reply to
this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Examiner Note:
1. In bracket 2, insert the date of
the interview.
2. In bracket 3, explain the
deficiencies.
Applicant’s summary of what took place at the interview should be
carefully checked to ensure the accuracy of any argument or statement attributed to
the examiner during the interview. If there is an inaccuracy and it bears directly on
the question of patentability, it should be pointed out in the next Office
communication from the examiner (e.g., rejection, interview summary, or notice of
allowability), wherein the examiner should set forth an accurate version of the
examiner's argument or statement.
If the record is complete and accurate, the examiner should
electronically annotate the record with the indication
"Interview
record OK"
on the paper recording the substance of the
interview.
Except in unusual situations, interviews with examiners are not
permitted after the submission of an appeal brief or after a notice of allowability for
the application has been mailed.
An interview may be appropriate before applicant’s first reply when the
examiner has suggested that allowable subject matter is present or where it will assist
applicant in judging the propriety of continuing the prosecution.
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. See MPEP §
105.
Interviews (MPEP § 713) are frequently requested by
persons whose credentials are of such informal character that there is serious question
as to whether such persons are entitled to any information under the provisions of
37 CFR
1.14. In general, interviews are not granted to persons who lack
proper authority from the applicant or attorney or agent of record in the form of a
submission on file in the application. A MERE POWER TO INSPECT IS NOT SUFFICIENT
AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION.
Interviews are generally not granted to registered individuals to whom
there is no power of attorney or authorization to act in a representative capacity. See
MPEP §
405 for additional information and for form PTO/SB/84,
Authorization to Act in a Representative Capacity. Note that pursuant to
37 CFR
11.106, a practitioner cannot authorize other registered
practitioners to conduct interviews unless the client gives informed consent.
Furthermore, even with informed consent, a practitioner should not authorize a
nonpractitioner to conduct interviews as this could be considered aiding in the
unauthorized practice of law. See 37 CFR 11.505.
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 electronically, prior to the interview. Registered
practitioners, when acting in a representative capacity, can alternatively show
authorization to conduct an interview by completing, signing and filing an Applicant
Initiated Interview Request Form (PTOL-413A). This eliminates the need to file a power
of attorney or authorization to act in a representative capacity before having an
interview. 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 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).
Interviews normally should not be granted unless the requesting party
has authority to bind the principal concerned. 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, will be considered a violation of 37 CFR 11.18 and
may result in disciplinary action if done by a practitioner. See MPEP § 410 for a
discussion of violations of 37 CFR 11.18.
For an interview with an examiner who does not have negotiation
authority, arrangements should always include an examiner who does have such authority,
and who is familiar with the application, so that authoritative agreement may be reached
at the time of the interview.
GROUPED INTERVIEWS
For attorneys remote from the Washington, D.C. area who prefer
in-person or video conference interviews, the grouped interview practice is
effective. Where agreement is reached as a result of an interview, applicant or
applicant’s attorney or agent, as appropriate, should be advised that an amendment
pursuant to the agreement should be promptly submitted.
713.06 No Inter Partes Questions Discussed
Ex Parte [R-08.2012]
The examiner may not discuss inter partes questions
ex parte with any of the interested parties.
713.07 Exposure of Other Cases [R-07.2022]
Prior to an interview, the examiner should ensure that all files,
drawings and other papers, except those necessary in the interview, are out of view. See
MPEP §
101.
713.08 Demonstration, Exhibits, Models [R-07.2015]
The invention in question may be exhibited or demonstrated during the
interview by a model or exhibit thereof. A model or exhibit will not generally be
admitted as part of the record of an application. See 37 CFR 1.91.
However, a model or exhibit submitted by the applicant which complies with
37 CFR
1.91 would be made part of the application record. See
MPEP §§
608.03 and 608.03(a).
If the model or exhibit is merely used for demonstration purpose during
the course of the interview, it will not be made part of the record (does not comply
with 37 CFR
1.91). A full description as to what was demonstrated/exhibited
must be made of record in the application. See 37 CFR 1.133(b). Demonstrations of
apparatus or exhibits too large to be brought into the Office may be viewed by the
examiner outside of the Office (in the Washington, D.C. area) with the approval of the
supervisory patent examiner. It is presumed that the witnessing of the demonstration or
the reviewing of the exhibit is actually essential in the developing and clarifying of
the issues involved in the application.
713.09 Interviews Between Final Rejection and Notice of
Appeal [R-08.2017]
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.
However, prior to the interview, the intended purpose and content of the interview
should be presented briefly, preferably in writing. 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. Interviews merely to restate arguments of
record or to discuss new limitations which would require more than nominal
reconsideration or new search should be denied. See MPEP § 714.13.
Interviews may be held after the expiration of the shortened statutory
period and prior to the maximum permitted statutory period of 6 months without an
extension of time. See MPEP § 706.07(f).
A second or further interview after a final rejection may be held if the
examiner is convinced that it will expedite the issues for appeal or disposal of the
application.
After an application is sent to issue, it is technically no longer under
the jurisdiction of the primary examiner. 37 CFR 1.312. An interview with an
examiner that would involve a detailed consideration of claims sought to be entered and
perhaps entailing a discussion of the prior art for determining whether or not the
claims are allowable should not be given. Obviously an applicant is not entitled to a
greater degree of consideration in an amendment presented informally than is given an
applicant in the consideration of an amendment when formally presented, particularly
since consideration of an amendment filed under 37 CFR 1.312 cannot be demanded as a
matter of right.
Requests for interviews on cases where a notice of allowance has been
mailed should be granted only with specific approval of the Technology Center Director
upon a showing in writing of extraordinary circumstances.