Examiner Interview Changes Favor In Person Meeting

By Gene Quinn
July 13, 2009

Last week I was at the Patent Office interviewing a case along with Mark Malek, who was in town from Florida to talk firm business, look for office space and interview some patent agents regarding coming to work with us.  The interviews lined up for this trip were all “Bilski-related,” in that the CAFC decision in In re Bilski was creating patentability issues.   We learned that the sand is shifting with respect to the way the Patent Office is handling Bilski.  What we learned is that things that we were doing in previous months are no longer acceptable.  It seems that early last week a memo went out from the powers that be to the examiners handling Bilski-related applications, and in the memo it was explained that merely putting “computer implemented method” in the preamble of the claim is not something that will any longer work to overcome a patentable subject matter rejection under 35 U.S.C. 101. It seems that now you need to have “computer implemented method” in the preamble and there must also be positive recitation of “a computer” in the body of the claim.  So the claims will now read something like “a computer implemented method… wherein the above steps are performed on a computer.”  As Mark said, “talk about the Department of Redundancy Department!”

We joked about the redundancy required for a while, but if that is what it takes then we are up to the challenge, after all it would be extremely hard to argue after the patent issues that having “computer implemented method” in the preamble did not limit the steps to being performed on a computer.  It just seems that the PTO wants “a computer” to be positively recited in the body, perhaps as a bright line rule to prevent any creative patent attorney from later arguing that the preamble is not limiting.  Who knows?  But what I do know is that we are on the cusp of three more Bilski successes.

The more I see and learn about Bilski the more I think it is not any real impediment to obtaining patents.  In fact, I continue to believe that if the patent attorney or agent really understands computer technologies what Bilski does is provide a road-map to follow directly to the issuance of a patent.  As odd as it sounds, I am also increasingly of the opinion that the problems surrounding the patenting of computer software are nothing more than attorney/agent problems.  I increasingly hear about how some patent attorneys and agents are just not familiar with computer technologies, yet they try and operate in this space.  That is extremely dangerous for the inventor though. Based on what I hear from inventors, and from examiners, it is no wonder Bilski is viewed by many to be a closed door.  Apparently, there are some in the patent bar that believe printing from a computer is enough to define a computer implemented method.  If that is true, I better understand the need for tighter rules.  I just hope the Supreme Court doesn’t kill the golden goose.  There are really a lot of unique and cool computer related methods that are true innovations.

To many who are uninitiated computer software inventions are quite amorphous and ill defined.  When compared with mechanical and electrical inventions that can be touched that is true, but just because you cannot touch it does not mean it is not patentable.  Additionally, if you really understand software and describe the invention well, there will be something there that is touchable and many somethings that are concrete and identifable.  It unfortunately seems that some who are not knowledgeable in this area take the cases and just simply write the patent explaining the desired function, and not how to obtain that function.  It seems to me that we should be handling these issues with enablement, not with patentable subject matter, but that is another topic for another day.

As with everything in life, when you are working on something and  a related topic surfaces it always has more meaning.  Last week was no exception.  As I was just getting done with an interview I received an e-mail from Ron Reardon, the President of the National Association of Patent Practitioners, regarding interviews.  This e-mail had this FYI information:

At a personal interview in the PTO yesterday, a SPE informed me that there is a new policy requiring the examiners to enter into the IFW whatever the applicant send the examiner in anticipation of a personal interview. Accordingly, anything sent via facsimile to the examiner’s personal fax number in anticipation of an interview will become part of the public record.

And then this response from another attorney:

We just changed our rules so, in the future, you cannot email or send proposed amendments without them going in the records.

After having what I believe was an extremely fruitful interview, I have to say that in person interviews are definitely the way to go, particularly if everything is going to go into the file.  Of course, I am located in Northern Virginia and that does make it easy to get to the USPTO to meet with an examiner in person when necessary.  In any event, if you really need to have a frank discussion with an examiner and want to propose some alternatives in writing to jump start the conversation it seems like the telephonic interview is no longer the most desirable way to proceed.  We all know what happens when anything candid gets into the file, and there is simply no reason to provide that kind of fodder for litigators down the road.  Why go to the expense and effort to get a patent that provides obvious opportunity for it to be picked apart?

Going into the interview last week I was not really sure what to expect.  It seemed as if an extremely popular reference for this technology was not considered by the examiner, and it was certainly not a part of the Office Action.  This together with certain things that came up during the case rose questions whether the examiner was understanding the invention.  It became readily apparent that the examiner was on top of everything, knew about this reference and did not consider it to be relevant for a just reason, but did express willingness to consider the reference so that a patent litigator cannot trick a district court judge later into the erroneous belief that a critical reference was not considered.  It was good to see that the examiner was on the ball and knew the invention, and that we were able to figure out exactly what needs to be done in the Request for Continued Examination (RCE).

If you can talk the client into an in person interview, I definitely highly recommend it given the new Office policy regarding faxes and e-mails.  Dangling your interest in figuring out what needs to be done so a productive RCE can be filed that will make the case immediately allowable also has benefits as well.  At the end of the day all we want are patents for our clients, and if that requires an in person meeting and an RCE, and maybe the addition of some redundant language that does not narrow the claims, sigh me up!  I like this more friendly Patent Office that is interested in working together to find language that is allowable, and I like it even more that examiners do not seem troubled by Bilski in the least.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. Heidi July 13, 2009 9:39 pm

    Hi Gene,

    I saw your post about examiner interview and I have to say I completely agree. I am a pro se applicant after I had bad experience with my patent attorney. I have to say that when I came to the patent office with a very bad feeling. I have read about the horror stories from other IP-related blog about nasty and rude patent examiner. It didn’t help either that my patent examiner looked very young, reek of coffee and looked like he hasn’t slept in a couple of days. But as soon as the interview started, he is actually very helpful and seems to be very familiar with our invention and specification. Well long story short, I’m holding a notice of allowance for one of our case and he’s doing an examiner’s amendment to allow our other case.

    Newly patented,
    Heidi

  2. Gene Quinn July 13, 2009 10:26 pm

    Congratulations Heidi! A lot can be accomplished by treating examiners like you would like to be treated yourself. They are people too, and deserve respect. I never have understood why some patent attorneys and agents are rude or demeaning. Why would you want to do that to anyone, let alone the person who is the decision maker?

    One very important thing for you though, I would strongly recommend that you get a competent patent attorney to review your applications to see if you are leaving any claimable ground uncovered. Even at this late stage you could file an RCE, continuation or even a continuation in part if you have to add material. One of the real problems with doing it yourself is pro se folks universally receive very narrow claims.

    Thanks for reading IPWatchdog.com.

    -Gene

  3. American Cowboy July 14, 2009 9:39 am

    “just simply write the patent explaining the desired function, and not how to obtain that function”

    I have written numerous software patent applications, and in my experience, a big part of the problem is getting the inventors to tell you “how to obtain that function.” They are great at handing you the user’s manual and enabling use of the software, but when you tell them that we need to tell others how to write their own code to do the same thing, you can see the effect of tightening sphincters. I attribute that reaction to the widespread belief in the software community that you are supposed to rely only on copyright protection and trade secrets to save your competetive position in new developments — just the opposite of what patents are all about. That, plus, it is a lot of work to generate flow charts etc, that they should have been doing all along, but skipped over.

  4. Scott Moe July 14, 2009 1:20 pm

    I wonder what an infringing product looks like after Bliski. Software sold without a computer is not like an invention that includes a computer.

  5. Robert K S July 14, 2009 2:41 pm

    The PTO directive described in this blog post (particularly first paragraph) needn’t necessarily have anything to do with Bilski. Decades of case law and a big section of the MPEP (2111.02) are dedicated to whether or not a preamble is limiting. In theory, all an applicant need do is aver (i.e., admit) that a preamble should be considered limiting sometime during prosecution in order for the PTO to be forced construe the preamble as limiting (Catalina v. Coolsavings) and give it patentable weight that may distinguish it over the prior art (or in this case make it Bilski-proof). In practice this hasn’t been happening, because examiners haven’t been following the law or the MPEP. We can expect to see the BPAI and the CAFC flooded with appeals on this issue.

  6. Alex July 14, 2009 3:09 pm

    I find it interesting that the previously off-record discussions associated with Examiner interviews are now going to be public record. Is there any way to confirm this with the PTO? Is this an agency wide change, or is this only in one particular art unit or art center?

  7. Mark Nowotarski July 15, 2009 8:17 am

    Is it even legal for the USPTO to set patentability standards by internal nonpublic memos? I thought they had to follow the MPEP.

    Yes, it’s great to get the inside scoop from an examiner interview, but what about the applicants that follow the proceedures and guidance of the MPEP? The examiner will cite the new secret requirements that aren’t in the MPEP, and the applicant will quite properly conclude that the examiner is in error. The net effect is that a great deal of applicant money and office resources will be wasted as both sides are playing off of a different set of rules.

  8. 2600examiner July 15, 2009 10:21 pm

    I don’t know why interviews aren’t more popular. I’ve only had one interview request this year.

  9. Gene Quinn July 16, 2009 12:19 pm

    2600-

    That is amazing. I can’t understand why that would be the case. Perhaps it is just the belief in the bar that the PTO management has issued “reject, reject, reject right now” edicts. It seems that allowances are starting to come through more often, and I think interviews with examiners are extremely helpful and a good path to follow.

    From your perspective, is a telephone interview as helpful as an in person interview?

    -Gene

  10. Examiner Y July 16, 2009 11:03 pm

    In the recent round of interview training we were indeed told that proposed amendments and arguments should be entered into the record. There was also a lot of talk about the need for detailed interview summaries.

    My personal interview experiences, noting that I don’t work in a “hot-button” area that is constantly being affected by court decisions:

    1. I do lots of interviews.
    2. Interviews are almost always helpful and the cases are disposed of much sooner. The cases that stay on my docket forever and go through many rounds of prosecution are never interviewed.
    3. In person interviews are slightly better than phone interviews but both are useful.
    4. In-house attorneys seem to request interviews less frequently than outside attorneys.

    While I get lots of interviews, I rarely get any appeals these days…only 1 brief the last 16 months IIRC.

  11. Gene Quinn July 17, 2009 1:09 am

    Examiner Y-

    Thanks for the information. I would love to chat with you off the record either via phone or e-mail. I always keep confidences, and would treat any communications confidential. I am also interested in chatting with other examiners interested in sharing on this topic.

    Do you see any common thread or characteristics of attorneys who do not seek interviews other than in-house vs. firm attorneys? Is it an age thing? Is it an experience thing? Do you see fewer interview requests from West Coast attorneys vs. East Coast attorneys?

    Could you elaborate on why in person are slightly better? Is it the obvious “face time” that allows for a professional relationship and maybe non-verbal communication to be read and picked up on? I assume these are the reasons, which makes sense, but if you have other suggestions I would love to hear them. Also would love to hear what you find (in general terms) to be effective. There are many of us that would like to help you all as much as we reasonably can and the goal is to get justified patents issued. I think the Office is on a good path. But what can attorneys do to help? I have long thought we are ships passing in the night, not understanding where the other is coming from.

    Thanks.

    _Gene

  12. 2600examiner July 19, 2009 11:00 pm

    “Perhaps it is just the belief in the bar that the PTO management has issued “reject, reject, reject right now” edicts.”
    Part of it’s just chance IMO. There are certain types of applicants that like to call. The interview request I got this year was for an invention in a very active area. In fact the lawyer said something in the interview to the effect that the claim can be very narrow if it still reads on a certain well known product. I talked to the same lawyer 3-4 times in 2008. Another case I interviewed multiple times in 2008 was for a patent for a startup company. Both those cases really just involved lawyers that were “fishing” but did not present any proposed amendments.

    Proper PTO procedure is to have someone with negotiation authority (GS-13 and above) present, but in the maybe 10+ interviews I’ve had in my career, all of them except the first one have been solo. Not having negotiation authority never stopped me from agreeing that amendment XYZ overcomes rejection ABC. I guess technically I’m still a “junior examiner” (although I have been the “senior” examiner in interviews three times), but the examiners I know that are greener than I am seem to get a steady stream of interview requests. Maybe lawyers think they’re more likely to make some headway with newbies especially since there are likely blatant errors in OAs?

    “From your perspective, is a telephone interview as helpful as an in person interview?”
    Everything else equal maybe in-person interviews are slightly more productive, but the type of interview is much less of a factor than how prepared a lawyer is.

  13. Ernie Beffel June 18, 2011 12:43 pm

    Desktop sharing is an alternative to in person interviews that allows you to work through wording of a proposed amendment without sending the examiner a copy by fax or email. The PTO has approved of using Adobe Connect or WebEx to share your desktop with a patent examiner. The examiners really appreciate having something to look at during a telephone interview. IMHO, if you have some relationship with the examiner, desktop sharing during a telephone interview is even better than an in person interview.