Tips from a Former Examiner on How to Conduct Interviews at the USPTO

“The signatory authority of an examiner may incentivize rejecting claims rather than allowing. Specifically, junior examiners have a greater incentive to reject patent claims and avoid indicating any allowable subject matter.”

https://depositphotos.com/20780069/stock-photo-interview-note-in-the-agenda.htmlThe “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner.

Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

The Purpose

Interviews can be a powerful tool to shorten prosecution. This is because it gives the applicant a unique insight into how the examiner thinks about their case while also allowing the applicant to convey critical information to the examiner that may be missing or overlooked during the course of prosecution.

When and How to Interview

Interviews can be useful at any stage of prosecution as long as it can resolve issues and help further prosecution. Interviews should be held before prosecution reaches a sticking point. The best time to schedule an interview is usually after the first office action on the merits. In the past, interviews were often held in person on the USPTO campus in Alexandria, VA. Today, however, video conferencing is the most practical way to connect with the examiners, since most examiners work remotely.

The Effective Interview

The examiner has a finite amount of time they can spend on a single case. USPTO examiners are only given one hour for the whole interview process, including preparation before the interview and writing the interview summary afterwards. That is why it is very important to conduct an effective interview in as little time as is necessary. The ideal interview lasts no more than 30 minutes. To help the examiner, the applicant or their representative should submit an agenda and any proposed claim amendments at least 24 hours prior to the interview. In addition to facilitating preparation, submitting an agenda can give the examiner time to determine how to approach a favorable outcome based on the proposed strategy proffered by the applicant. After introductions, the actual interview should be short and sweet. Both the examiner and applicant will write up a detailed summary after the interview is over, including whether an agreement was reached.

The Substance of the Interview

After the first office action, the examiner will generally know what the closest prior art is and what it takes to overcome the rejections. Applicant should address each issue and ask if the proposed response would likely overcome the respective objection(s) or rejection(s). However, interviews are not a fishing expedition, and the examiner cannot provide legal advice. Thus, it is up to the applicant to propose their strategy. The practitioner will need to tell the examiner what they think and ask the examiner if that’s something that will advance prosecution and help reach a mutually beneficial outcome. I recommend giving the examiner different strategy options (e.g., different proposed claim amendments). This gives the examiner an opportunity to determine which approach would likely work best. Of course, it also goes without saying that being courteous and respectful to the examiner, especially when disagreements inevitably arise, is crucial to maintaining a good relationship and reaching a favorable outcome. Remember that this examiner will likely see every child or sister patent application related to the invention. Getting on the examiner’s good side early will pay dividends later.

One Versus Two Examiners and Why it Matters

When a USPTO patent application is examined, the Office issues one or more office actions that are either signed by a single examiner or a second examiner with authority to sign. My experience as a former Primary Examiner gave me a unique insight into what this signatory distinction means and why it affects patent prosecution strategy.

Signatory Authority

Not all patent examiners are equal. A USPTO examiner that lacks partial or full signatory authority (typically GS-7 to GS-13) is commonly referred to as a “junior” or “assistant” examiner. After several years of promotions, the certification exam (the USPTO equivalent of the patent bar), and a signatory program where supervisors scrutinize a plethora office actions over a probationary period, an examiner attains the rank of Primary Examiner (GS-14/GS-15) and the authority to sign most office actions. A Supervisory Patent Examiner (“SPE”) is a former Primary Examiner that also has signatory authority along with other managerial duties. SPEs and Primaries approve and sign office actions of junior examiners. The inherent signatory authority of an examiner directly affects decision-making for determining the finality of an application and what can be agreed to during an interview.

Incentives to Reject or Allow

The signatory authority of an examiner may incentivize rejecting claims rather than allowing. Specifically, junior examiners have a greater incentive to reject patent claims and avoid indicating any allowable subject matter. The reason for this is because a junior examiner has the ability to reject patent claims at any point during prosecution, but the determination of allowable subject matter cannot occur without approval from a Primary or SPE. Thus, a Primary or SPE is more likely to accept signing a rejection since that is easier than conferring with the junior examiner for determining allowability. This is especially the case when the junior examiner is under a time crunch to get a case off their docket. Additionally, examiners that have partial signatory authority (“PSA” examiners) have a motivation to reject cases that are non-final since they do not need a Primary or SPE to sign any non-final office actions. In contrast, an allowance is an office action that is final and, therefore, the PSA examiner does require a Primary or SPE to review and sign.

As an example of this phenomenon, in my first three years at the USPTO as a junior examiner, I rarely had a case where an allowance was issued in the first office action, and I rejected claims more frequently than when I became a Primary Examiner. As a Primary Examiner, I could routinely allow cases earlier and often, such as by proactively placing a call to the applicant’s representative to make suggested changes or by issuing an Examiner’s Amendment.

On the other hand, a junior examiner does not have these tools at their disposal and, depending on the grade level, they may not even have authority to conduct an interview without a Primary or SPE present. In theory, it should not make a difference. In reality, however, junior examiners may not be on the same wavelength as their Primary or SPE and issuing rejections is safer and easier to get office actions out the door, even if the grounds of rejection are weak.

Prosecution Strategy Based on Signatory Authority

Each examiner is different, and knowing the signatory authority of an examiner may affect prosecution strategy for the applicant.

It is important to remember that a Primary Examiner is the exclusive authority until a case is appealed. Calling upon a SPE for assistance or requesting their presence in an interview when a Primary Examiner is the sole person examining a case is not only unhelpful but also risks anger and resentment from both the Primary and the SPE. A SPE may automatically presume the attorney is trying to subvert the Primary Examiner’s authority. Challenging a Primary Examiner’s authority to make decisions defeats the whole point of the years and hard work to achieve that title and rank.

On the other hand, requesting a Primary Examiner or a SPE when a junior examiner is being interviewed can be helpful since allowable subject matter cannot be determined without their approval. Moreover, a SPE or Primary Examiner typically has more experience that can facilitate decision making.

The examiner’s signatory authority may affect the strategy to provide claim amendment(s) or arguments. For example, Primary Examiners may indicate how to overcome a rejection in an office action by suggesting a claim amendment. A junior examiner is less likely to reveal what could overcome the rejection. Furthermore, a junior examiner may have a higher likelihood of rejecting claims that are amended, which may not be worthwhile in the first place if the grounds of the rejection are weak.

Finally, the examiner’s signatory authority may also influence the decision as to whether to appeal or continue prosecution. For example, knowing the proclivity of a junior examiner to reject claims adds weight to appealing a case that is ripe rather than filing a request for continued examination.

Each USPTO office action presents one or more issues that need to be resolved when formulating a response. Therefore, knowing the significance of an examiner’s signatory authority can be helpful when addressing those issues.

The Goal: A Roadmap to Allowance

If the applicant or their representative sees at least some benefit, conducting an effective interview can expedite prosecution and minimize costs. Done correctly, the interview should provide the applicant further insight into how the examiner thinks and a clearer roadmap for getting the claims allowed.

 

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22 comments so far. Add my comment.

  • [Avatar for concerned]
    concerned
    May 21, 2022 10:32 am

    Benny:

    While you think about the 10 sample approach proposed, Bilski was discussed significantly during my oral hearing at CAFC.

    The machine or transformation test came up, which my dedicated computer network performing in a non conventional way and also a non trivial way would meet. I realize the machine or transformation test is not exclusive. This dedicated network would be a closed system operating by law in a secured fashion to waive consent through its pipeline to ensure compliance to law. Nobody has ever done the same (no 102 or 103 rejections.)

    My attorney argued at oral hearing, and in the blue brief, that mental steps have been rejected by the courts in favor of an evidence based approach. That no judge, examiner, attorney, etc. respectfully could be an expert in every field, evidence matters.

    The very mountain of evidence on record the USPTO and Board have refused to acknowledge, while proving no counter evidence, would prove that my process, individual steps or in combination, has never been used in commerce.

    Look forward to hearing back from you.

  • [Avatar for concerned]
    concerned
    May 21, 2022 07:58 am

    Benny:

    Interesting thought you had.

    The 10 records the challenger could use would be under the following process:

    We go to New Hampshire. I pick 10 Social Security Offices around the State. The challenger walks in to those individual offices, I pick a random person from a phone book, and the challenger asks for their record while stating he has no consent from that person. The request is from his mind only.

    IPwatchdog covers the action.

  • [Avatar for concerned]
    concerned
    May 21, 2022 07:28 am

    Benny:

    Thank you for your comments! And great story.

    I think 10 records would work if the 10 records would be picked randomly to ensure the challenger was overcoming consent with mental thoughts void of permission from the Social Security Administration, parents and adult children. Any unauthorized access and use of the records would disqualify the challenger.

    Did the tractor get a patent? Did the tractor just ramp up the plowing efforts of 50 men? The computer network would be a dedicated network, not one off the shelf. Your thoughts?

  • [Avatar for concerned]
    concerned
    May 21, 2022 07:15 am

    The preceding would need Mr. Quinn’s concurrence and I would ask the authorities to be present during said webcast.

    I am sure the authorities, and every citizen, would be very concerned if the consent aspects could be compromised mentally.

  • [Avatar for Benny]
    Benny
    May 21, 2022 07:14 am

    Concerned,
    There is a tale told of George Bernard Shaw who one asked a society lady if she would “entertain” him in return for 1 million pounds. The lady agreed that this would be a fair exchange, but then Shaw reduced the fee to 5 pounds. What do you think I am, says the lady, and Shaw answers, we have already established that, now we are merely arguing over the price.
    Let’s try your mental process with just 10 records. Once we have established it is possible , we can tell the computer “repeat a million times”.
    Or perhaps someone could explain if repetition is an innovative improvement over a single step.

  • [Avatar for concerned]
    concerned
    May 21, 2022 06:46 am

    Let’s have some fun if Mr. Quinn would give concurrence.

    I will raise $500,000 against anybody’s $500,000, winner takes all. Funds placed into escrow.

    We go to New Hampshire and ask IPWatchdog to webcast the opening event. The challenger has to prove he can do my process mentally.

    First, the challenger in his mind only, needs to get 3 million records (Ohio only for this purpose) without physical consent from the necessary parties. The consent is just spoken into play from one’s mind without the concurrence of Social Security Administration, parents and adult children. Of course these records will contain sensitive personal information.

    Then the challenger has to determine which of the 3 million records that were obtained without consent can 1.5 million records be excluded, namely the aged and poor, leaving 1.5 million records.

    Then in his mind only, who has been overlooked for SSDI from the 1.5 million records.

    The feat needs to be accomplished from said mind within 12 months to avoid loss of benefits. Feel free to use pen and paper.

    Loser pays IPwatchdog costs. The challenger pays any legal costs if sued for unlawful access and use of said records or if charged criminally for hacking the records.

  • [Avatar for Dennis Parad]
    Dennis Parad
    May 20, 2022 10:36 pm

    @concerned thank you for asking my opinion but I would seek legal advice from a registered patent practitioner (attorney/agent) with familiarity in the technology you are trying to patent. This article is merely informational and is not intended to be a legal opinion.

    @Benny this is my opinion/observation rather than an admission. Complete impartiality is nearly impossible but the system in place incentivizes certain outcomes.

  • [Avatar for concerned]
    concerned
    May 20, 2022 02:27 am

    Primary Examiner:

    It was the PTAB that inserted the mental steps rejection.

    The little exercise I went through with Curious reveals the second examiner wrote the response to my appeal brief on September 19,2019. I found at least one USPTO guidance dated January 4, 2019 that discussed mental steps, 9 months prior to the examiner’s response. Neither examiner raised the mental steps rejection, my feeling at the time and to this date, is because both examiners had initimate knowledge of my prosecution.

    My attorney argues that the PTAB was just doing an end run around the evidence when the PTAB switched rejection theory to mental steps. Of course, that same unacknowledged evidence (“THE” Ohio State University study by GRC) shows that two professionals could not even do 358 “physical hands on” reviews in two years let alone 1.5 million reviews in real time. The 358 reviews had people not cooperating, not consenting, people not coming forth for a review and people already on SSDI. There is a statute of limitations when benefits drop off, 12 months date of application.

    There is also a second university study (Marquette) on record from a man who is considered a legend on the seminar circuit. No way anybody on Earth can do my process in their mind.

    I might have got somewhere if you were my primary examiner. And I enjoy conversing with you. However, the first examiner told me in a telephone conversation the higher ups were blocking my application, how much higher up I do not know.

    This is year eight of my prosecution. I could have went back to the examiners on the newly raised mental steps rejection, however, nobody at the USPTO was even acknowledging the evidence. Still the evidence through the CAFC appeal has not been acknowledged, the assistant Solicitor sure did not, it sinks her argument. The preceding just reinforces my thoughts that going back to the examiners was a waste of time.

    Eight long years and still nothing.

  • [Avatar for concerned]
    concerned
    May 19, 2022 07:43 pm

    A document with first examiner’s name on it March 28 2018.

    A document with second examiner’s name on it Sept 19, 2019.

    Are telephone conversations recorded? I would like to get a copy of our conversation.

  • [Avatar for concerned]
    concerned
    May 19, 2022 07:18 pm

    First examiner: Ali M. Hatem

    Second examiner: Hanzi M. Kazimi

    Mr. Hatem told me I should get the patent in a telephone interview. I did not request Mr. Kazimi.

    Curious did you ease drop on my telephone interview with Mr. Hatem and my attorney?

    You also have some interesting views on waiving consent also.

    Could you use your real name? I want to check out your great work in the patent field. Perhaps you could write an article?

  • [Avatar for Curious]
    Curious
    May 19, 2022 06:25 pm

    The first examiner thought I should get the patent, the higher ups were blocking it. He was replaced by the second examiner.
    Why do you continue to misrepresent your record?

    The interview summary dated 03-28-18 states that “Examiner will consider Applicant’s arguments to the 101 rejection upon formal submission of Applicant’s response. No agreement was reached.” Applicant summary of interview dated 03-29-18 states “Agreement as to patent subject matter eligibility was not reached.”

    The final Office Action (dated 06-29-18) that you appealed had the non-primary’s name on it. The Examiner’s Answer had the primary’s name on it — the same primary examiner who has initially assigned to the application (see page 15 of OA dated 07-27-16).

    So no. The examiner did not agree you deserved a patent. And no, the USPTO didn’t foist some second examiner on you.

    If you cannot acknowledge the reality of your own facts, how can you acknowledge the reality of the law?

  • [Avatar for concerned]
    concerned
    May 19, 2022 03:55 pm

    Primary Examiner:

    “Curious” mentioned the same possibility. In real time, it did not seem like the case of new guidelines being the reason for lack of the mental steps rejection beforehand.

    The first examiner thought I should get the patent, the higher ups were blocking it. He was replaced by the second examiner.

    In addition, the evidence was on file way in advance of the new 2019 guidelines.

    The evidence showed that the solution could not be done physically by the experts. Two professionals could not even review 358 people physically in two years. People would not cooperate, people would not participate, and people would not consent. Some are involved in criminal activity and some were already getting SSDI. A total of 1.5 million people are in the scope of the review in my State alone.

    We are also looking for the definitions of inventive concept and significantly more, as you know from past postings. No court has define such, the Solicitor would no touch it. My definition: Significantly more being a review of 1.5 million people when physically 358 could not be reviewed by two professionals.

  • [Avatar for primary examiner]
    primary examiner
    May 19, 2022 03:21 pm

    “And neither examiner raised the mental steps rejection as both examiners were intimately aware of the circumstances. The PTAB raised the issue and said we should submit evidence, which would be the same evidence already on the record and not acknowledged.”

    Both examiners examined your Application prior to the 2019 PEG (oct. 2019). The 2019 PEG lays out the abstract idea categories explicitly, mental process being one of them. It’s unfortunate that the timing was not on your side, but it happened.

  • [Avatar for concerned]
    concerned
    May 19, 2022 02:50 pm

    Primary Examiner:

    That you for the input. The computer networks for the interfacing would not be off the shelf, if that answers the question.

    And neither examiner raised the mental steps rejection as both examiners were intimately aware of the circumstances. The PTAB raised the issue and said we should submit evidence, which would be the same evidence already on the record and not acknowledged.

  • [Avatar for concerned]
    concerned
    May 19, 2022 02:33 pm

    To be clear of the circumstances, a stranger could walk into any Social Security Office in the country, say that they decided to waive my consent in their mind, that I have no knowledge of this transaction and the personnel would give out my personal information to the stranger?

    The above and other aspects cannot be reasonably done in the mind per the evidence.

  • [Avatar for Julie Burke]
    Julie Burke
    May 19, 2022 02:29 pm

    Thank you, Dennis, for this article. As a former USPTO Quality Assurance Specialist, I agree with many of your points.

    I also agree with commenters’ identification of the tacit admission: whether a claim is allowed or rejected depends not only on its’ merits, but on whose table it lands for examination.

    Taking this one step further, the article also illustrates the perils (actual and perceived) of challenging a primary examiner.

    Perhaps Director Vidal would consider looking into the wide-spread, long-standing practice of Supervisory Patent Examiners (SPEs) sidestepping their supervisory tasks and ceding their authority over their primary examiners, despite explicit instructions in MPEP 707.02:

    “The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.

    The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.

    Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution.

    In order to accomplish this result, the application is to be considered “special” by the examiner.”

  • [Avatar for primary examiner]
    primary examiner
    May 19, 2022 02:22 pm

    @Concerned: ” It takes a physical and dedicated computer network”
    If your physical and dedicated computer network is a generic one, and the claims are found to recite a mental process, then the claims will still fall under the mental process. If you believe your network is not a typical (generic) computer network, then you should argue that, assuming of course you have the required support in your disclosure.

    Have you tried asking your questions to a patent attorney? They seem to be the type of questions that your legal patent representative should have the answers to.

  • [Avatar for concerned]
    concerned
    May 19, 2022 01:27 pm

    So you can waive my consent mentally as a third party against my will or without my knowledge?

    Under what authority is this possible?

  • [Avatar for Curious]
    Curious
    May 19, 2022 01:23 pm

    For example, it is impossible to waive consent “mentally” by a third party. It takes a physical and dedicated computer network with legal authority and agreements in place to bypass consent.
    No. People have been waiving consent long before computers ever existed.

    This is how the 2019 Patent Eligibility Guidelines describes a mental process:
    If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.

    The Federal Circuit case you should read is Cybersource Corp. v. Retail Decisions. This is one of the claims:
    2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
    a) obtaining credit card information relating to the transactions from the consumer; and
    b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent,
    wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,
    wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;
    [a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
    [b] constructing a map of credit card numbers based upon the other transactions; and
    [c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

    The Federal Circuit determined these to be directed to a mental process. Personally, I think the Federal Circuit got it wrong on many different levels. However, that is the state of the law.

  • [Avatar for Curious]
    Curious
    May 19, 2022 01:11 pm

    The article includes a tacit admission that whether a claim is allowed or rejected depends not only on its’ merits, but on whose table it lands for examination. An impartial system this is not.
    Bingo.

  • [Avatar for Benny]
    Benny
    May 19, 2022 11:28 am

    The article includes a tacit admission that whether a claim is allowed or rejected depends not only on its’ merits, but on whose table it lands for examination. An impartial system this is not.

  • [Avatar for concerned]
    concerned
    May 19, 2022 10:27 am

    Thank you for your article! May I ask your opinion on the following questions?

    1). Do I have a right to establish a prima facia case?

    2). If the USPTO and its Board make statements that I feel are not accurate, do I have a right to submit evidence to dispute their statements? And if I submit evidence, do the USPTO and its Board have an obligation to review and address said evidence?

    3). If the USPTO and its Board make characterizations about my claims based on appearance, but the evidence proves these characterizations to be incorrect, do the incorrect characterizations still control for rejection purposes or does the evidence?

    On my prosecution and several comments on this forum, my claims have been characterized as mental steps by a superficial review of the claims, however, the specs and evidence clearly show my process cannot be done with pure mental steps. For example, it is impossible to waive consent “mentally” by a third party. It takes a physical and dedicated computer network with legal authority and agreements in place to bypass consent. Just looking at the claims, an uniformed person would not realize the preceding.

    However, the two examiners I had during prosecution realized the gist of the matter and never argued mental steps, it was the PTAB. The PTAB said I should submit evidence on the new rejection theory, the vary evidence the USPTO and Board refuse to acknowledge throughout the prosecution, no kidding.

    I look forward to your opinions. Thank you.

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