Patent Prosecution: Accelerated Examination

According to a press release, the PTO issued the first patent reviewed under its ‘accelerated examination’ program that began last fall. The patent, issued to Brother Kogyo Kabushiki Kaisha of Nagoya, Japan was filed on September 29, 2006 and issued less than six-months later as US Patent No. 7,188,939 (Ink Cartridges). The prosecution history includes an examiner interview via telephone followed by a clarifying amendment and a notice of allowance.

Accelerated examination procedures have been labeled onerous. Yet, in this case the Japanese ink-powerhouse appears to have used the procedure for its advantage.

63 thoughts on “Patent Prosecution: Accelerated Examination

  1. “In consideration of this rule, it seems that what happens in the interview (that does not make it into the written record vis a vis 133(b)) stays in the interview. Amen”

    Wrong again. Try this: “If a [patent office] employee is authorized to testify, the employee will be limited to testifying about facts within the employee’s personal knowledge.” {MPEP 1801.01)

    Here the facts within the examiner’s personal knowledge are answers to questions such as thw following: “Did Applicant mention anything about X during the Interview?”

    If you can find case law which states that an Examiner is prohibited from answering such a question in court, I’d be glad to see it. Good luck.

  2. “I dont know what “rule” Malcolm is talking about regarding recording of substance. I guess he just makes stuff up as he goes along. ”

    MPEP 713.04 Substance of Interview Must Be Made of Record

    Tune in next time when we ask the question, “Is CaveMan a liar, retarded or both?”

  3. FYI:

    ยง 1.2 Business to be transacted in writing.

    All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. ***The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.*** No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

    In consideration of this rule, it seems that what happens in the interview (that does not make it into the written record vis a vis 133(b)) stays in the interview.

    Amen

  4. I dont know what “rule” Malcolm is talking about regarding recording of substance. I guess he just makes stuff up as he goes along. The rules are fairly clear. They state that:

    “…in every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant.”

    They also state that:

    “An interview does not remove the necessity for reply to Office actions…” (In other words the case is not going to amend or allow itself)

    Now it seems to me that if a case is interviewed and an argument is made that creates a “180 degree” turn around, the Applicant MUST present that same argument in the subsequently filed request for reconsideration “in view of an interview with an examiner”

    With all due respect, Mooney is the answer to the question nobody asked and the solution to the problem that nobody has.

  5. Listen anon, I’m not saying that what you put in your arguments doesn’t matter, which is why nothing is better than gobbledygook or admissions. If you write it, they will “latch on to it.”

    But, absent something, a claim amendment with no explanation of “why” the amendment was made (aside from – claim 1, as amended, distinguishes over Johnson) is still legitimate and preferable.

    If you need to construe the claim, look at the spec and/or previous arguments – if they are there. Otherwise, you may find yourself spending all of your time preoccupied with briefs (and boxers) like Mooney.

  6. Malcolm wrote, “That is as it should be. Other issues should be resolved in writing, so the public is not left guessing as to what statements were made by Applicant.”

    As far as policy goes, I agree with you.

    But can you really trust the USPTO to implement and enforce rules that promote good patent policy when doing so would increase pendency (the only thing they appear to care about these days)?

  7. “The recordation of interviews would end interview practice except for routine, minor issues.”

    That is as it should be. Other issues should be resolved in writing, so the public is not left guessing as to what statements were made by Applicant.

    Allan McD’s point about what the PTO “allows” to be recorded is well taken. However, unless the PTO enforces its rules about recording the substance (i.e., ANY statement by an applicant which is material to patentability, including ANY statement by Applicant relevant to the construction of ANY claim term) of interviews more diligently, we will see more Examiners testifying in court about statements made during Interviews. That is what subpoeanas are for.

  8. “the above statement makes absolutely no sense. Talk about hacks…”

    Keep digging, CaveMan! It’s only Tuesday, after all.

  9. Back to the original topic…

    Note that Brother today was issued another Accelerated Exam patent, number 7,192,198 also for “Ink Cartridges”. This one did not require any interview.

    These appear to be the only two patents thusfar issued under the AE program. Notably, both were examined by the same examiner.

  10. CaveMan wrote, “what matters most at the end of the day are the claims and not so much **why** an amendment was made.”

    What matters most is what the claims literally mean. The “why” matters because it often affects that literal meaning. Take a random sample of Federal Circuit cases and you’ll find them latching onto applicants’ statements about the prior art to construe the literal meaning of claim terms. Estoppel as to the meaning of a term (which affects literal infringement) can be far more devastating than Festo prosecution history estoppel (which affects DOE).

  11. Don’t forget one powerful detente here can be characterized as follows:

    1) if I want to avance a case after an interview by amending a claim to distinguish over the applied art and I don’t want to include many remarks, my amendment better speak for itself – in other words, it better be fairly narrowing (voila, I have a complete record of what matters from the interview in the form of a res ipsa loquitor narrowing amendment).

    2) if I want to advance a case after an interview without amendment or with minor amendments, I better have some good remarks, most likely ones that are in-line with what was discussed in the interview (voila, I have a complete record of what matters from the interview in the form of lengthy remarks explaining hair-thin amendments).

    If there is another way to advance a case that is under final, I can’t see it.

    UGH

  12. Anon, as you may not know, but should know, what matters most at the end of the day are the claims and not so much **why** an amendment was made. If I make an amendment and put in my remarks that the amendment distinguishes over the applied art, I don’t really need much more of a reason that that.

    Anything I say in an interview can be summarized in the form of:”Johnson fails to disclose the feature of claim 1 as amended.” The actual amendment itself is the most important factor. With no record at all, an amendment, in and of itself, will invoke estoppel, especially in view of Festo.

    Also, the notion of writing a broad claim 1 that you know will be rejected is no longer good practice in fiew of Festo and hasn’t been for years.

    “Interviewing will always be the quickest way to resolve issues, which is why the best judges are those who read the Markman briefs and ask the hardest questions”

    – the above statement makes absolutely no sense. Talk about hacks…

  13. Malcolm Mooney wrote, “Recording Interviews won’t kill the Interview process. But it will be mildly poisonous to the hacks who abuse the Interview process to kick up dust or who use the process simply to whine and cry about the Examiner’s unfairness.”

    If the USPTO starts recording interviews, applcants will likely have to be just as formal and guarded as they are in their written amendments, which will remove most of the benefit of the interview.

    In addition to informality, interview practice allows applicants to propose varying (sometimes progressively narrower) amendments and point out distinctions associated with each. Estoppel-adverse applicants will not want to create argument estoppel for each proposed amendment when only one amendment is ultimately found persuasive.

    It’s almost always better to have a silent record that limits estoppel to Festo than to have a detailed record that alters the ordinary meaning of claim terms. I believe that interview practice is widely used to minimize estoppel related to the meaning of terms. The recordation of interviews would end interview practice except for routine, minor issues.

  14. Since the PTO refuses to permit examiners to testify in litigation as to what went on in prosecution (i.e., in that interview that has little or no record in the file history) there is no way they are going to permit recording of interviews.

  15. patent laws stipulate that the best of method of prctising the invention shall be described sufficiently..it is on this piece of knowledge(invention) ,an examiner applies patentability criterion in the light of prior art. applying patentability criterion involves obviously knowledge consuming human intervention ,which obviously consumes time….now my doubt is,even if the applicant is submitting closest prior art how can the time taken by an examiner to apply patentability criterion can be cut short. another doubt is ,why on the hell the applicant will submit the closest prior art ,to his own peril.

  16. “9 out of 10 (probably more like 99 out of 100) cases are filed where the first claim is clearly unpatentable, usually over the prior art.”

    I believe that the PTO prefers that the first claim be the broadest, in which case it makes perfect sense that Claim 1 is most likely to be rejected. I also get the impression that if the first claim is not allowable, then the heck with the rest. Those claims must be bad, too.

    It is because of this attitude that I now make Claim 1 a narrow claim and put my broadest claim well after claim 1. I find I get fewer summary rejections because the examiner has more elements and limitations to address.

  17. “Why would the USPTO want to kill interview practice by requiring recordation?”

    In theory, anything (indeed, everything) the applicant says is “on the record” and people still do Interviews. Interviewing will always be the quickest way to resolve issues, which is why the best judges are those who read the Markman briefs and ask the hardest questions.

    Recording Interviews won’t kill the Interview process. But it will be mildly poisonous to the hacks who abuse the Interview process to kick up dust or who use the process simply to whine and cry about the Examiner’s unfairness.

  18. “your air of infallibility”. I do not claim to be infallible as an examiner, since we all make mistakes. However, 9 out of 10 (probably more like 99 out of 100) cases are filed where the first claim is clearly unpatentable, usually over the prior art. The issue then becomes how carefully can I treat each of the next 40-80 claims in the case.

    Perhaps JohnG disagrees, and believes that he(or she) unlike every other attorney, only files high quality claims that are always free of the prior art. If so, post 10 application numbers for everyone to review. I bet that 9 out of 10, at least, will have a first claim that is unpatentable. I don’t doubt that buried in some dependent claim is some allowable subject matter, perhaps claimed in an indefinite or overbroad way, but I bet it is not in claim 1.

  19. CaveMan wrote, “It doesn’t matter what the Interview Summary says in your example.”

    Actually, it’s not my example. It’s the case that the focus of this particular blog entry. The prosecution history is available for download above.

    A record that describes **how** a claim was amended is not the same as a record that describes **why** the amendment avoided the cited references. Reasons why the amendment avoided the prior art (for example, applicants arguments regarding the meaning of a term and/or how particular features of a term are not met in a cited reference) can have significant sway in an interview. If applicants get the benefit of such arguments in an interview, they should be stuck with them in later litigation. Meaningless summaries (like the one in the case above) allow applicants avoid being stuck with such arguments.

    I have two bits that says Malcolm is wrong about the recording of interviews. Interviews tend to advance prosecution and decrease pendency. Why would the USPTO want to kill interview practice by requiring recordation?

  20. “The Interview Summary sheets themselves might be a joke, but that’s not what Mooney said. He said the idea of an interview that is not recorded word for word is a jokeyou d and should preclude a presumption of validity. Now THAT is a joke…”

    I predict that within the next decade, all Interviews with PTO Examiners will be recorded.

    Anybody willing to wager otherwise?

  21. The Interview Summary sheets themselves might be a joke, but that’s not what Mooney said. He said the idea of an interview that is not recorded word for word is a jokeyou d and should preclude a presumption of validity. Now THAT is a joke…

    It doesn’t matter what the Interview Summary says in your example, since:

    1) the amendment itself, even if accompanied by no remarks or sparse remarks, becomes of record in the amendment that will ultimately be filed based upon the interview to advance the case,

    2) more likely the amendment and/or remarks that accompany the subsequent paper filed by the applicant will create a record, and

    3) an Examiner’s amendment, if used (which is unlikely in an Interview context), will create a record.

    The Examiner’s amendment is usually used when the Examiner, sua sponte, proposes an amendment that will result in allowability.

    In the case where the applicant requests and is granted an interview, no Examiner in their right mind would allow a case on Examiner’s amendment based on the applicants proposed amendment or remarks – why would they if they’ve already gone to the trouble of mailing a final action?

  22. CaveMan wrote, “The record has to be clear as to why an action was taken.”

    What about this case’s record? Do you suppose that, in the interview, the applicant merely said “This amendment distinguishes the prior art” without any explanation? More likely, the applicant said, “This amendment distinguishes the prior art because …” But the interview summary does not include that “because” clause, which illustrates how most summaries are (to borrow MM’s phrase) a joke.

  23. “In Mooney’s world, I would go have an interview and then suddenly, notwithstanding an outstanding after final rejection, a notice of allowance and issue fee due would suddenly appear in my incoming mail with no remarks by the Examiner – yeah right.”

    Another Monday, another strawman. Oh well.

  24. What seems to be missed by some here is that the Interview Summary doesn’t matter regardless of who prepared it. What matters is the next official (of record) action taken by the applicant or the Examiner. The applicant must explain in the remarks why a certain amendment was made, or if a slam dunk and possibly new argument was test fired in the interveiw it must be made in, for example, a supplemental after final to advance the case to issue. In Mooney’s world, I would go have an interview and then suddenly, notwithstanding an outstanding after final rejection, a notice of allowance and issue fee due would suddenly appear in my incoming mail with no remarks by the Examiner – yeah right.

    As johng said, the interview is often just about clarifying an argument that is already of record and essentially painting a picture for the Examiner – who will have a much harder time ignoring you in-person, whether by telephone or face-to-face. If the Examiner remains dug-in, at least the applicant will have a better idea as to why and can act accordingly.

    To say that an interview can entirely change the direction of prosecution is to say that the written prosecution record is irrelevant and such an idea comes from an amatuer mind – and I won’t mention any names such as Mooney.

    The record has to be clear as to why an action was taken. Like the Examiner here said, some form of paper for the record from either the applicant or Examiner is absolutely necessary to advance the case… I don’t know any legitmate applicants or Examiners that would want it any other way even if they could.

    Its like a first action allowance, sounds good at first to guys like Mooney, but who in thier right mind would want it?

  25. anonymous examiner says: “I do suppose that it is possible (and in interviews with junior examiners this does happen), that a claim limitation already present was not appreciated.”

    I find that many of my rejections are because the examiner has not considered at least one element and/or limitation in the claim. And, many of these rejections are from primaries.

  26. One thing that needs to be remembered, there are thousands of PTO examiners, some good, some not. What troubles me is the inconsistency among examiners. The Rules and the MPEP are designed to ensure consistency of examinations, but, all too often, I encounter examiners who are unfamiliar with the rules and the MPEP (including primary and SPEs). In so many cases I am surprised at the arrogance of the examiner when it is suggested that the Rules or MPEP suggest that the examiner should be doing something different.

  27. You make some good points anonymous examiner, but your air of infallibility is surprising. Everyone occasionally makes mistakes (on both sides) or does not fully appreciate a limitation for what it is. Note to self: do not ever interview with Examiner Anon :) Go straight to appeal.

  28. As an examiner, I appreciate Mr. Mooney’s position, but do not agree with the concern over estoppel issues. I have never been convinced in an interview to allow a case without some form of later documentation. It may be claim amendments, it may be a declaration, or it may be a particularly persuasive argument (virtually never the last). In any of these cases, I am not going to allow the case until the amendment, declaration or argument is on the record in the next response by the attorney.

    I do suppose that it is possible (and in interviews with junior examiners this does happen), that a claim limitation already present was not appreciated. This sort of argument usually just results in a new rejection over the claim limitation. If the argument were to actually result in allowance, the limitation would be noted in the allowance. If the examiner doesn’t do this, they are not doing their job. I am unclear why Mr. Mooney thinks that they would be more likely to properly record the conversation than do their job.

  29. I’m wondering what other attorneys think of the merit of some sort of inequitable conduct charge against a patentee who (via the attorney) does not submit a reasonably comprehensive interview summary. I too have read one-liner interview summaries, and have been able to generate questions relating to matters not recorded in the interview summary, but which were logically necessarily required to have been addressed during the interview in order for the outcome to make any sense. Would it be a worthwhile thing in all cases, to presumptively find a one-line interview summary as not reasonably comprehensive, and therefore an intentional omission of material facts by the applicant and/or attorney?

  30. MM, I have interviews only where there is blatant disregard for my arguments, or where an impasse exists with respect to interpretation. For the latter, I attempt to openly discuss particular language and listen to explanations offered by the examiner, but not provided in his actions. Sometimes, we provide proposed amendments in the form of written proposals. Sometimes, a good examiner will suggest language that we adopt. In all cases where agreement is reached, the record is clear as to what happened during the meeting from the summary, the previously submitted arguments, and/or the subsequently filed response.

    I believe 180 degree turnarounds having no reasons in the record are rare, and I believe it is bad practice not to ensure something agreed upon is not provided in the record. If the examiner is lazy or incompetent, you have the opportunity to provide a brief summary of the issue agreed upon in your next response, along with a request that the examiner provide further comments if your recollection is not accurate.

  31. > There does exist a mechanism for forcing the applicant to record the substance of the interview. Rule 133(b) requires a complete written statement of the arguments presented at the interview. The examiner, however, can waive the requirement. The solution may be as simple as removing that “check box” from the Interview Summary Record and training the examiners to enforce the rule.

    That check box has already been removed from the Applicant-Initiated Interview Form. (It still exists on the Examiner-Initiated Interview Form.)

  32. The EPO doesn’t do interviews, because 1) each case has to be signed off by a panel of three examiners (the examining division) and you aren’t going to get all three on the phone, or together in person. The one who is on the phone is not able to explain afterwards to his two colleagues exactly what it was on the phone that turned the case around. Because 2) the primary examiner’s first language is not the language of the proceedings so he doesn’t feel comfortable in the presence of a fast-talking smooth prosecutor, and because 3) applicants who choose a non-German prosecuting attorney a long way from Munich should not be at a disadvantage. Thus, the EPO is uniquely fortunate in being able effectively to resist the pressure from prosecutors for interviews. Good. Whether it is a US patent, a German patent or a UK patent, a file wrapper with an Examiner interview has a black hole in it. Can we all get rid of these black holes, please?

  33. “The idea of an interview is exactly that the Rules provide for an “official” dialog where exact details are NOT recorded which dialog furthers the ultimate goal of granting a patent”

    The part about “NOT recording” the “exact details” is surely not relevant to the “idea” of the Interview, at least not since the invention of magnetic tape, unless the purpose of the Interview is to allow the applicant to display “exceptional candor,” which it is not.

    Actually, I think in the good old days people used to present miniature mechanical “models” of their invention during the Interview and show the examiner how those models work when the parts are in motion. I seem to recall that the models would actually be deposited at the PTO in some cases. Some of the models that I’ve seen are mindblowing in terms of their craftsmanship.

    But I’m aware of models which were discussed at Interviews but which were not deposited and whose actual functionality is anybody’s guess. I’m also aware of lengthy and ultimately persuasive “presentations” being held at the PTO, but the substantive content of those presentations is mostly left to the public’s imagination.

    “I’m not seeing where the inequitable conduct comes in.”

    The inequitable conduct comes in where the applicant makes a statement relevant to the patentability of an applicant’s claims which is either false or which is inconsistent with a previous position held by the applicant. The trend that I notice is applicants who wisely do not cross the line of blatant misrepresentation in their written submissions (or don’t cross it too often) but are not successful in persuading the Examiner. Then *voila* suddenly after the Interview the Examiner is “comfortable” with those previously flawed arguments. What the heck happened? Why doesn’t the public have a right to know?

    I agree that Examiners could, in theory, be required to write more rigorous Interview summaries. But the fact is that they often don’t and such summaries are inherently inferior to a transcript or recording of the Interview which, in 2007, would be trivial to obtain and store.

  34. Everyone knows that a primary benefit of interviewing cases is to minimize admissions and estoppel — thus giving litigators maximum flexibility.

    Any skilled patent attorney can draft a bland summary of the interview (see, for example, the one in this case), thus leaving the courts and the public with nothing to work with.

    If an applicant obtains his or her patent through a particular argument or interpretation of a reference, why shouldn’t that applicant be bound to that argument or interpretation?

  35. Gotta disagree with you, CaveMan.

    Lots of things “should” happen. There are rules and statutes that say what “must” happen. All too often, what should happen does not. I have reviewed many filewrappers where the examiner allows rejected claims after an interview and the record contains no hint as to why. I remember a recent case where the examiner even made an examiner’s amendment before allowing the claims. Sure, the examiner and the applicant “should” create a record of the arguments and reasons for allowance. Too often that record is either missing from the filewrapper or is condensed to one or two sentences.

  36. You’re irrelevant Mooney, and just because several posters seem to like the sound of what you’re saying, doesn’t change anything.

    Since Interviews are provided for by the rules and provided the rules are followed, your snarky comparisons to “having statements in Markman hearings deleted” hold absolutely no water and are pretty much irrelevant and a poor comparison. There is nothing to delete – that’s the point.

    As I earlier said, if a interview somehow “mysteriously” results in a 180 degree shift (its really not so mysterious), the substance of the interview become part of the record since a subsequent submission by the applicant with attendant amendments and remarks would be required. Just think about it, the Interview does not, in itself, advance the case in any way; an action by the applicant or the office is required to advance the case after an Interview. Clearly some issue of advancement of the case must exist such as a final rejection or the like. I can’t imagine a situation where an Interview would need to take place otherwise except possibly an Interview before a first action, which interviews are not allowed.

    Further, if the case is so susceptible to a 180 degree turn, then why was not the previous response by the applicant persuasive? If the 180 degree turn is simply because of the strength of the applicants’ remarks in the interview, then, in order to advance the case to issue, those remarks will have to be submitted in an after final response, which will paper the record with the effective contents of the interview.

    In the bizzare instance where the Examiner somehow issues a Notice of Allowance sua sponte following a final rejection on the strength of the interview, they will have to explain that in the Notice of Allowance, since the case must be advanced by withdrawing the finality of the rejections. Thus, even in this bizzare circumstance, the record will be papered with the effective contents of the interview since no Examiner would do such a strange thing without providing a good reason, e.g. the reasons provided by the applicant in the interview.

    And I’m not seeing where the inequitable conduct comes in. Maybe the applicant or representative threatens the Examiner with bodily harm during the interview none of which is caught on record? I’m sure in your sweaty world that happens all the time.

    Based on your history of snarky and antagonistic comments on this board, its not suprising to me that you put so much effort and paranoia into form over substance. Form over substance is in direct contradiction to centuries of modern thought regarding matters of equity.

    As you should know but probably don’t, the venerable principles of equity that govern patent law demand the opposite, substance over form. The idea of an interview is exactly that the Rules provide for an “official” dialog where exact details are NOT recorded which dialog furthers the ultimate goal of granting a patent, which is then enforced subject to the prosecution record.

    Sounds pretty good to me. I don’t see what “mysterious” things could happen in an interview, at least not one where you are not present.

  37. “I can’t imagine an Examiner who would even entertain discussion that strayed too far from the record….”

    It’s irrelevant what you can or can’t imagine.

    As several practicioners here have noted, the *fact* is that Interview summaries are worthless for determining the EXACT assertions that were that were made by the Applicant. As you surely know, those assertions — when written — are red meat for judges and attorneys when attempting to construe claims and when attempting to determine whether an applicant is engaging in inequitable conduct.

    The other fact is that Interviews are (or were) critical to obtaining many patents and it is not unusual for a case to be turned 180 degrees during an Interview. Then the Summary is two sentences. Do you think it was a twenty second conversation? I know that’s not how it works because I’ve interviewed plenty of cases.

    Maybe patentees should lobby to have their statements in Markman hearings deleted as well. As long as the existence of the hearing is recorded, what’s the point of wasting all that paper? No judge is going to let the discussion stray too far off topic, right?

  38. In Mooney’s stringent world, no one would interview a case, which, in Mooney’s case, is probably better anyway. I’d hate to be an Examiner and have to deal with Mooney swishing into my office with poetry, panty hose, glasses of wine, soft music and a tape recorder and/or stenographer.

    The flexibility of an interview setting allows the applicant some leeway in explaining the invention, perhaps in connection with examples that start from hypothetical language that is very limiting toward more reasonable language that might result in allowance, all of which would not be possible if all comments were of record and the threat of a written admission were in the air.

    Anyway, I don’t know what kind of opinions Mooney has been working on aside from the quality of the selection of spring pumps at Saks, but in the context of an interview a savvy Examiner is:

    1) not going to commit to anything on record anyway, an agreement with regard to the claims is rarely reached; and

    2) is going to require a submission, notwithstanding the interview, upon which they will act (often times proposed submissions or official submissions are required by the Examiner prior to the interview).

    The rules governing Examiner Interviews require the Applicant to summarize the substance of the Interview in the next response as noted by John Darling above, and the Examiner is aslo required to provide a statement of reasons for allowance.

    Since the existance of the Interview is or should be of record anyway, I don’t really see what all the fuss is about or what the “joke” is (except that Mooney keeps posting here and good people like Mr. Darling keep paying him mind). If an Interview takes place “off the record” subsequent actions still need to conform to rules, e.g. the applicant must submit a reponse (those claims aren’t going to amend themselves) and if the Examiner suddenly “allows” a case that was, say, after final, without a submission by the applicant, there must be some reason given, such as a Statement of Reasons for Allowance, or the case wouldn’t pass Quality Review.

    By the time an Interview takes place the record should clearly show what the applicant considers to be the distinguishing features. The interview provides a way for some additional persuasion and a face to face opportunity to review the record. I can’t imagine an Examiner who would even entertain discussion that strayed too far from the record, much less act on such discussion in a manner that would be discontinuous with the record, and much much less a casual hallway conversation consisting of a wink and a nod that mysteriously results in an allowance.

    Get real.

  39. anonymous (anon@gmail.com) wrote, “If you bother to actually read the interview summary, you will see that everything is well documented. It’s not like the courts actually care what was discussed anyway.”

    In the case at issue, there was almost no documentation — just a recitation that a particular claim was not patentable over a cited reference, but would be patentable with an amendment.

    The courts rely heavily upon comments made during prosecution — just pick up any random sampling of Federal Circuit patent cases. Arguments made to distinguish the prior art are especially relied upon.

    Yet arguments for patentability are almost never documented in interview summaries. Typically, the summaries mention the cited art and the claims — but not the distinguishing features that the applicant highlighted. Such “documentation” (if you can call it that) is virtually useless to the courts and to the public.

  40. I agree with Malcom that the “interview-allowance paradigm” at the PTO is somewhat of a joke. If arguments create estoppel, then an interview summary that reads, “discussed pending claims and agreed allowable” is an example of the applicant “getting away” with something.

    I do seem to remember a proposal a few years back to record and/or transcribe interviews, and the patent bar howled in protest.

    There does exist a mechanism for forcing the applicant to record the substance of the interview. Rule 133(b) requires a complete written statement of the arguments presented at the interview. The examiner, however, can waive the requirement. The solution may be as simple as removing that “check box” from the Interview Summary Record and training the examiners to enforce the rule.

  41. “It’s not like the courts actually care what was discussed anyway.”

    Is it National Nihilist Day already?

  42. Regarding interview summaries, I agree with Tom to some extent. When I draft an Interview Summary or include it in a Response, I make sure to keep the substance of the summary to one sentence with a couple other sentences relating to procedural/formal aspects of the interview. I try to keep the one substantive sentence as broad as possible.

    I learned this at my very first firm and at subsequent firms and continuing education courses. I would be surprised if any competent practitioner did otherwise. Although, the Examiner may attempt to include more in their own Summary.

  43. Blaise wrote:
    “I actually have heard in the PTO hallways several times ‘Oh, that’s [insert large foreign corporation name]. Go final, they will RCE it’. I only left the Office 2 years ago so I doubt it has changed that much.”

    A couple of fellow in-house patent attorneys have mentioned developing a reputation for not buckling and we appeal a lot. In fact, I have filed about 50 appeals over the past three years and very few RCE’s. I consider it a luxury in my current position to be allowed to do so.

    Recently, I noticed that I am getting a lot of second, third, and even fourth non-final Office Actions. Maybe we are developing a reputation. Maybe the PTO has changed its bean count policy and this is happening to everyone (10 years ago, we never received beans for subsequent non-final Office Actions).

    Unfortunately, this is still the opposite of Accelerated Examination.

  44. anonymous says: “If you bother to actually read the interview summary, you will see that everything is well documented.”

    From this comment, it appears that you have not reviewed very many interview summaries. Almost every interview summary I’ve seen contains one, maybe two, sentences with minimal information. Pretty much useless for documenting any applicant arguments. That’s good if its my interview, bad if I’m writing an opinion.

  45. So much misinformation.

    If you bother to actually read the interview summary, you will see that everything is well documented. It’s not like the courts actually care what was discussed anyway. They’ll make up their own mind regardless of what an examiner and attorney agreed to.
    AE is not about marketing. It only cost slightly more to file one. The PTO has plenty of money. It’s about solving the problem of long pendency. Did you see Dudas’ testimony on congress the other week about the budget, he mentioned AE when congress asked what he was doing about pendency.

    Yes, they were issued fast. what’s the point of getting a patent under AE if it takes 6 months to issue? It’s not like these are pg-pubbed (too new), so you need that publication, its your first one.

    There are certain companies I’ve worked for that never appeal. I’m not going to mention any, because that’s none of anyone’s business. But there are some. I’m sure examiner’s know this.

  46. OK so foreign companies then? I don’t know. I’ve never played that game either. I can see this is just going to be a deadlock.

  47. Passerby: Most of the large companies with this reputation are foreign.
    I actually have heard in the PTO hallways several times “Oh, that’s [insert large foreign corporation name]. Go final, they will RCE it”.
    I only left the Office 2 years ago so I doubt it has changed that much.

  48. Blaise: Play that game these days and you will be appealed just as often. I’ve never been in a tight spot and had someone offer me “Oh, that’s [IBM, hp, etc.]. Go final, they will RCE it.”

  49. “He loves to make stupid statements”

    Nice ad hominem, John. Glad to see the knee is jerking smoothly.

    Of course (as anonymous pointed out above) the idea that interviews with examiners should be transcribed is not “stupid,” nor is the idea that patents granted in the absence of a full record of the patentee’s statements should be denied the presumption of validity afforded to patents which were granted without resort to these mysterious “interviews.”

    John, have you ever been asked to write an opinion about the validity of a patent which appeared to be sunk in the mud but which was granted after an “Interview” in which the Examiner inexplicably did a 180 degree about face? I have. More than once.

    Or maybe, John, you’ve used the Interview process as a way to get, er, difficult arguments before the Examiner without writing them down? Have you ever done that? I have. More than once. Zealous advocacy of my clients’ interest arguably would mandate efforts to minimize the written record, given the estoppel effects of prosecution history.

    Is there any reason to expect Examiners and Applicants to rely on Interviews even more than usual in the context of accelerated exams? Of course there is. It’s quicker to blab back and forth in real time than to draft and exchange lengthy formal papers.

    So let’s have full transcripts of Interviews. It’s a fair solution to a very real problem.

  50. About fast issuance from Notice of Allowance, I have the recent experience of receiving a Notice of Allowance on 23 January, paying the issue fee on 14 February, and having the patent scheduled to issue next Tuesday. A previous case had N/A on 15 August, i/fee 25 August, issuance 31 October. And both were regular examination applications. On the other hand, I have another application on which the issue fee was paid on 27 September and I’m still waiting for the issue notification. I don’t understand the order in which cases move from allowance to issuance, but by and large the process does seem to be speeding up (probably because of pre-grant publication, which means the applications are already typeset).

  51. Did anyone else catch that it was only six weeks from the Notice of Allowance until the patent actually issued? I have cases that take several *months* after paying the issue fee before even receiving an issue notification.

    I have a feeling the PTO moved this to the front of the printing line, too; it’s nice marketing to say “issued less than six months after filing.”

  52. As another former examiner I disagree with the above comment by Passerby. Certain large corporations have reputations for tendency to file RCEs versus appealing and this can strongly effect the examiner’s behavior. Personally, I always had a little more sympathy for pro se or independent inventors in suggesting amendments leading to allowance.

  53. As a former examiner, I can assure you that they could not care LESS if you are a big corporation or not. There is so much else going on that it isn’t even on the radar. If anyone feels this way, I can only offer that there must be something else to blame in your case.

  54. During interviews, applicants can argue for narrow interpretation of their claims to obtain allowance.

    However, those narrow interpretations are rarely (if ever) preserved in an interview summary.

    Consequently, patentees are almost always free to argue broad interpretation for infringement without any estoppel issues relating to their undocumented arguments.

    I believe this is the joke to which Malcolm refers.

  55. Representing the largest corporations in the world and sole inventors, I can say that we seem to have a bit more trouble with the Examiners when the app is assigned to the huge corporations than when it’s assigned to a small corporation. Individual inventors are somewhere in between.

    It is highly dependent on the examiner you get as to how the case goes. I’ve had claim sets that I thought would probably have to be amended a second or third time issue, and claims sets where I KNEW we were giving up more than necessary get rejected.

    Mr. George, you need a new patent attorney. Your’s has clearly not guided you and explained the situation well at all. I’m sorry to hear it went so badly for you.

  56. With all due respect, sounds like a bunch of sour grapes and ignorance of the system to me Mr. George… (what do you mean “moot” evidence?) First, I would recommend you get yourself a better patent attorney.

    I have a case now under A.E. and its chugging along just fine. I’ve gotten substantive OAs and responded in kind. Just got a call from the Ex. yesterday proposing an Ex amd. to move to allowance. Have done in a few months what would normally take a year and a half or more.

    Show me one federal agency that is as agile as the PTO…

  57. I am a patent holder being thru the patent process and issued a patent twice(#6,497,276 & #7,117,937). I have seen the patent office moot evidence that should eliminate an application (disclosure of more than one year), also remove and replace documents with different documents, (in application #09977775) which is fraud, for the benefit of the large corporation against the small individual, also stall to allow the large corporation to get past statutes for damages,(it took one year after notice of allowance and fees were paid to finally get issued). After the Patent Office recieved a phone call from the large corporation lawyers they were issued a patent(6,904,969)for our operating system, stating we had none. ha ha. I have no faith in the system. After six years we are still waiting on the Patent Office to decide on their case which has been in appeal since 2005 to see if we have a Patent worth anything. The Joke is on the public. I would not do this again.

  58. “The prosecution history includes an examiner interview via telephone followed by a clarifying amendment and a notice of allowance.”

    Congrats, Brother!

    Frankly, any patent which issues after an Interview which is not transcribed in its entirety should be denied any presumption of validity.

    The Interview -> Allowance paradigm at the PTO is a joke on the public.

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