The document discusses types of examiner interviews in patent prosecution, including planned and unexpected interviews. It provides tips for determining whether an interview should be in-person or telephonic, preparing for interviews, conducting interviews, and following up after interviews. The goal of interviews is to advance prosecution by clarifying issues, defining allowable subject matter, agreeing on claim language, or developing a work plan to resolve outstanding issues. Interviews require preparation, courtesy, and building a constructive relationship with the examiner.

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
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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?
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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?
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6. Planned Interviews
• Reasons for an interview
The Examiner’s position is not understood.
The Examiner appears to lack understanding of
the invention.
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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.
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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.
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9. When?
• Never at the end
of the quarter!
• Choose a neutral
time for the
Examiner’s
schedule even if it
is telephonic.
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10. Smith Moore Leatherwood LLP
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11. In Person or Telephonic?
• How to decide
Cost
Number and types
of issues that need
to be resolved
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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.
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13. In Person
• Be prepared – know your case; prior art.
• Have a clear goal in mind before going.
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14. In Person
• Plan on 30-60 minutes, no
longer.
• Don’t go with predetermined
notions, be prepared for
surprises – either good or
bad.
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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.
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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.
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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.
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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.
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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.
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20. Points of Law
• Should you bother?
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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.
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22. Smith Moore Leatherwood LLP
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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.
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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.
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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!
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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.
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27. Follow Up
• Reducing the interview to writing
Who does it?
How much should be written down?
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28. Smith Moore Leatherwood LLP
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29. Was the Interview a Success?
• Was allowable subject matter defined?
• Could you and the Examiner agree on claim language?
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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?
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31. Conclusions
• Examiner interviews can advance or slow successful
prosecution.
• Be prepared for the interview.
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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.