1. Leon Radomsky The Marbury Law Group PLLC www.MarburyLaw.com Interview Practice and Knowing the USPTO

2. KNOWING THE USPTO n Examiner background – Citing MPEP vs. case law – Business realities n Different issues in different tech centers – Biotech and organic chemistry – Software and business methods – Electronics and mechanical

3. PRODUCTION SYSTEM n Limited time to complete examination n Your application is one of many on the docket n 2 counts per disposal n 1 count for first office action n 1 count for allowance or abandonment n After Final Practice / RCEs n Restriction / Divisional

4. STRATEGIC USE OF INTERVIEWS n Get examiner’s feedback – Two way conversation – Get examiner to agree or disagree with your arguments – Unwritten reasons for rejection? – Work out misunderstandings n Presence of decision maker – Does examiner have signatory authority? – Advantage of personal interview

5. WHEN TO INTERVIEW Important application to business interest Several possible ways to overcome rejection –Obtain examiner’s feedback on which ones would be successful Unclear office action Misunderstanding

6. WHEN TO INTERVIEW n Geometrical shapes at issue – In claims – In prior art n Inherency rejections n Possible Rule 132 declaration

7. INVENTOR ATTENDANCE Business, cost and convenience considerations Increased credibility Risk Preparation

8. Inherency rejections Negotiate scope of 132 Declaration –Explain cost / substance of experiments Explain ambiguities in prior art Explain complex technologies –Hybrid technologies outside examiner’s expertise INVENTOR ATTENDANCE

9. PERSONAL VS. TELEPHONE n Cost vs. business interest n Is “face time” important? – Better feedback – Use of exhibits – Unwritten reasons for rejection – Geometrical shapes or figures at issue – Negotiated amendments n Phone interview may be sufficient – Clarification of office action

10. INTERVIEW CONCLUSION Review interview summary form after personal interviews –Note if examiner agreed to withdraw rejection Include agreed upon amendments in interview summary form Don’t forget to note substance of interview in next reply or in supplemental filing

11. APPEAL TO HIGHER AUTHORITY n Will RCE resolve issues? – New search / new issues? n Pre-appeal conference n Appeal Brief n Complaining to supervisors – Extreme cases only

12. CONCLUSION Use the interview strategically Be flexible –“Think on your feet” Get examiner’s feedback Make sure that you advance your client’s business interest!