Q) Interviews (10.03.3a)

by patentbar on November 15, 2007 · 16 comments

in Exam Questions

Recent test takers report question #3 from the October 2003 (a) exam is in the Patent Bar database of tested questions.

3. Inventor Joe is anxious to get a patent with the broadest claim coverage possible for the invention. Joe retained a registered practitioner, Jane, to obtain the advantage of legal counsel in obtaining broad protection. Jane filed a patent application for the invention. The inventor heard that, although patent prosecution is conducted in writing, it is possible to get interviews with examiners. Joe believes an interview might hasten the grant of a patent by providing the examiner a better understanding of the true novelty of the invention. Which of the following are consistent with the patent law, rules and procedures as related by the MPEP regarding usage of interviews?

(A) Prior to the first Office action being mailed the inventor calls the examiner to whom the application is docketed to offer help in understanding the specification.

(B) After receiving the first Office action Jane calls the examiner for an interview for the purpose of clarifying the structure and operation of the invention as claimed and disclosed, because the examiner’s analysis regarding patentability in the rejection is novel and suggests that the examiner is interpreting the claimed invention in a manner very different from the inventor’s intent.

(C) Jane has Larry, a registered practitioner in the Washington D.C. area, who is more familiar with interview practice to call the examiner. Jane gives Larry a copy of the first Office action, which suggests that the primary examiner’s analysis is incorrect, and offers to explain why. Jane instructs Larry that because Larry is unfamiliar with the inventor, Larry should not agree to possible ways in which the claims could be modified, or at least indicate to the examiner that Jane would have to approve of any such agreement.

(D) Jane calls the primary examiner after receiving the final rejection, demanding that the examiner withdraw the finality of the final action. When the examiner states that the final rejection is proper, Jane demands an interview as a matter of right to explain the arguments.

(E) (B) and (D).

3. ANSWER: (B) is the most correct answer. MPEP § 713.01, under the heading “Scheduling And Conducting An Interview,” states “[a]n interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.” (A) is incorrect. 37 CFR § 1.133(a)(2); MPEP § 713.02. Section 713.02 states that although “[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications[,] [a] request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a).” (C) is incorrect. MPEP § 713.03. Larry is only sounding out the examiner and has no authority to commit Joe to any agreement reached with the examiner. (D) is incorrect. MPEP § 713.09. Jane has no right to an interview following the final rejection. Although such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration, interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (E) is incorrect because (D) is incorrect.

{ 16 comments… read them below or add one }

1 SeanNo Gravatar April 24, 2009 at 4:22 pm

What does “sounding out” mean? In plain English as well in legal context. Thank you.

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2 PNo Gravatar May 2, 2009 at 11:03 pm

it means just offering arguments and suggestions for the purpose of getting feedback, in this case from the Examiner

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3 SeanNo Gravatar May 4, 2009 at 6:31 pm

Thank you.

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4 Number_27No Gravatar January 3, 2011 at 9:18 pm

My BAR/BRI materials has the correct answer as E quoting MPEP 713.02 (which I copied form USPTO website):

713.02 Interviews Prior to First Official Action [R-6]

A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action **>is encouraged where< the examiner determines that such an interview would advance prosecution of the application. Thus, the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the "closest" prior art and an explanation as to how the broadest claim distinguishes over such references. See 37 CFR 1.133(a).

There must have been recent change to 713.02

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5 LMNo Gravatar January 4, 2011 at 2:10 am

That is correct as per the latest revision, but does that mean that we have to check for latest revision to answer instead to concentrate on revision 4 for the exam purpose – confuse

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6 ShreyaNo Gravatar January 5, 2011 at 5:54 pm

I’m still unsure how “E” would be the correct answer based on that new excerpt from 713.02?
I don’t see a reference to the right to call and demand an interview in response to a final action.

7 LMNo Gravatar January 6, 2011 at 1:36 am

You are right Shreya – i did not read in detail. 713.02 deals with interview before first office action and answer choice D deals with after final action. I guess BarBri material is with error – Number_27 should ask BarBri for clarification.

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8 MNo Gravatar August 9, 2011 at 8:37 pm

Same as 4.03.20p
“A” is probably correct now as previously stated.

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9 MNo Gravatar August 9, 2011 at 8:39 pm

I meant to say “also correct”

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10 dkNo Gravatar September 15, 2011 at 1:38 am

There is no continuing application M. The old analysis has not changed.

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11 KforsytheNo Gravatar October 18, 2011 at 6:51 pm

Any current thoughts on what the right answer is right now? I’d still go with B…thoughts? Any havethis recently? It is still my understanding that you don’t have the “right” to an interview after a final rejection. Correct me if I am wrong.

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12 maggieNo Gravatar October 18, 2011 at 6:57 pm

You are right!

You don’t have the right to an interview
(1) before 1 office action ( in new application but ok in sub/continue app)
(2) after final rejection
(3) during appeal

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13 KforsytheNo Gravatar October 18, 2011 at 6:57 pm

Thank you!

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14 MirandaNo Gravatar February 3, 2012 at 9:38 pm

so both A and B are correct per mpep revision 8, correct?

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15 KerstinNo Gravatar February 6, 2012 at 9:49 pm

Miranda-I’d still go with B, as in A the inventor calls the examiner, vs. the other way around which would seem more in line with MPEP 713 as stated above. If the examiner needs something more then will call. B still seems more correct to me.

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16 GDBNo Gravatar April 13, 2012 at 1:08 pm

There is no right to an interview after a final rejection. It is at the discretion of the examiner – see below: MPEP 713.09

Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. See MPEP § 714.13.

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