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Examiner Interviews

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  • 1. Examiner Interviews NAPP® 2009 The Nuts & Bolts of Patent Prosecution Practice July 18, 2009 Presented by: Stan Antolin Smith Moore Leatherwood LLP 300 N. Greene Street, Suite 1400 Greensboro, NC 27401 T: 336-378-5200 F: 336-378-5400 © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 2. Special Thanks to . . . Nancy Pappas for providing the materials that served as the basis of this presentation. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 3. Types of Interviews • Planned • Unplanned Prescheduled A no-no Unexpected Telephonic – Restriction Requirements © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 4. Unexpected Interviews • Telephonic restriction requirements Do you need to make a decision on the spot? Can you change your mind after you hang up? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 5. Unexpected Interviews • Telephonic restriction requirements Should you confirm your answer in writing? Can I refuse without harming the future of the relationship with the Examiner? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 6. Planned Interviews • Reasons for an interview The Examiner’s position is not understood. The Examiner appears to lack understanding of the invention. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 7. Planned Interviews • Reasons for an interview A physical demonstration of a model would demonstrate a subtle difference hard to verbalize or draw. The Examiner seems to have an incorrect legal standard. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 8. When? • After receiving a first office action and before filing a response. • After final rejection, be prepared to advocate for the necessity of the interview; an outline of topics to be discussed or draft claims can be sent. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 9. When? • Never at the end of the quarter! • Choose a neutral time for the Examiner’s schedule even if it is telephonic. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 10. Smith Moore Leatherwood LLP © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 11. In Person or Telephonic? • How to decide Cost Number and types of issues that need to be resolved © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 12. In Person or Telephonic? • How to decide Urgency of needing to know where the Examiner’s head “is at.” Gut feeling that both you and the Examiner are on very different pages and a face to face interview would be better. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 13. In Person • Be prepared – know your case; prior art. • Have a clear goal in mind before going. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 14. In Person • Plan on 30-60 minutes, no longer. • Don’t go with predetermined notions, be prepared for surprises – either good or bad. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 15. In Person • If a preliminary summary has been delivered, realize that the Examiner may not have reviewed it. • Expect that possible supervisors may be present who are not as familiar with the case as they should be. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 16. When the Examiner’s Position is not Understood • First let the Examiner state his position. – However, prepare a series of questions before going to the interview in order to clarify for yourself what you do not understand. • Be prepared to clarify the invention. • Be prepared to meet with a wall that needs to be torn down. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 17. The Examiner Lacks Understanding of the Invention • Decide whether or not to bring the inventor, this can work against you easily. • Consider whether bringing a model or teaching tool would help. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 18. The Examiner Lacks Understanding of the Invention • BEFORE teaching, listen to the Examiner to determine what they believe the invention to be. • THEN teach the difference. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 19. Overcoming Prior Art • A model of the invention as well as a model of the prior art may be useful for distinguishing the invention. • Be prepared to offer to submit Declarations to support novelty, non-obviousness, and/or §112 issues. • Make sure that the combinations are in fact proper. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 20. Points of Law • Should you bother? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 21. Pre-Interview Preparation • Thoroughly review the specification and the prior art. • Remember, you can send in proposed claim language ahead of time – a draft. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 22. Smith Moore Leatherwood LLP © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 23. Pre-Interview Preparation • Thoroughly review the specification and the prior art. • Remember, you can send in proposed claim language ahead of time – a draft. • Proposed experiments for distinguishing the invention from the prior art can also be sent ahead of time. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 24. How to Conduct the Interview • Always be polite and friendly. If the inventor cannot be trusted on this score, do not bring them. • Let the Examiner explain their position. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 25. How to Conduct the Interview • Then if it is still unclear, go from there. • Remember to thank the Examiner - Even if you still don’t agree! © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 26. Remember, This is not a Fishing Expedition • An Examiner will continue to reject the case if he/she feels that you are not enthusiastic about it. • Firmness with the Examiner can be good but never talk down or act superior. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 27. Follow Up • Reducing the interview to writing Who does it? How much should be written down? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 28. Smith Moore Leatherwood LLP © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 29. Was the Interview a Success? • Was allowable subject matter defined? • Could you and the Examiner agree on claim language? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 30. Was the Interview a Success? • Do you understand the Examiner’s position better? • Did you and the Examiner agree to a mutual work plan for resolving the issues left in the case? © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 31. Conclusions • Examiner interviews can advance or slow successful prosecution. • Be prepared for the interview. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 32. Conclusions • Build a relationship with the Examiner – Listen first. Be polite. Thank the Examiner for their time. • Timing may be everything. © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  • 33. Thank you Stan Antolin stan.antolin@smithmoorelaw.com T: 336-378-5516 F: 336-433-7591 © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.