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AIPLA Biotech Committee Meeting

Washington D.C., October 14, 2004

Anthony Caputa, Ph.D.

Technology Center Practice Specialist

571-272-0829

TC 1600

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How Applicant can use the TPS or QAS

• Applicant can use TCPS or QAS to discuss patentability issues in applications which are not being resolved by the SPE or examiner

• Applicant can use TCPS or QAS to discuss TC policy issues (restriction, written description)

• Applicant can use TCPS or QAS to determine who to contact on various issues

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TIPS ON EFFECTIVE INTERVIEW

• Interview should be held only when the nature of the case is such that the interview could serve to develop and clarify specific issues

• Interview should be arranged in advance• An interview should not extend beyond a reasonable

period, usually no longer than 30 minutes• Submit an Applicant Initiated Interview Request

Form (PTOL-413A) prior to an interview

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Tips on a Effective Interview

• Substance of interview must be of record • Applicant is responsible for making the substance

of an interview of record except when the interview is initiated by the examiner and the examiner provides a written summary

• Interview Summary form does not need to be completed with an examiner’s amendment

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When interviews are prohibited or granted.

• Interviews are not permitted prior to filing. However, Examiner may indicate the field of search. See MPEP 713.02

• Interview prior to first Office action is ordinarily granted in continuing applications in TC 1600. In other applications a request before the first office action will not be granted or acknowledged in TC 1600.

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When interviews areprohibited or granted.

• Interviews are not permitted after an appeal brief is filed or after an application has been passed to issue except in unusual situations

• Normally one interview after final rejection is permitted. A further interview may be held if it will expedite the issues on appeal or dispose of the application

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After Final Practice

• Once a final rejection has been entered in an application, Applicant no longer has the right to unrestricted further prosecution ( i.e. to amend or add new claims)

• The prosecution of an application before the examiner should ordinarily be concluded with the final Office action

• Difficulties encountered with prosecution after final may be alleviated by including claims varying in scope from the broadest to the most narrowest which Applicant is willing to accept

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After Final Practice

• A reply to a final rejection is limited to: o An Amendment/Argument in compliance with

37 CFR 1.116o Notice of Appealo Proper RCE

o When applicant files an RCE, it is suggested that the applicant clearly indicate whether or not any previously filed after-final amendment should be entered

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Questions

Anthony Caputa

anthony.caputa@ uspto.gov

571-272-0829