sfipla dec. 14, 2010 at ropers majeski kohn & bentley interviews for compact prosecution dec....

SFIPLADec. 14, 2010at Ropers Majeski Kohn & Bentley

Interviews for Compact Prosecution

Dec. 14, 2010 SFIPLACopyright Ernie Beffel

Slide 1


Slide 3

Just Three Topics

• Why to interview: Policy, training and rules

• Getting ready: effective lesson plans

• Doing it: an argument-free structure and a new tool

Interview because …


Slide 4

Top Down Policy

Director Kappos, before House Judiciary Committee, May 5, 2010: •Detailed training in efficient interview techniques, compact prosecution, and negotiations•Number of hours of interviews in FY 2010 exceeds FY 2009 by more than 60%•The average number of office action to disposition has dropped from 2.9 to a sustained level of approximately 2.3


Slide 5

Years in the Making

2006 2007 2008 2009 2010

MPEP Rev 4Not before FOAM

MPEP Rev 5Sometimes

MPEP Rev 6Encouraged

Jun 2006AE Announced

Apr 2008FAIP Announced

May 2009Training Interviews & CP

Nov 2009Time Credit Given

2010Roadshows

Training

First Action Interview Pilot

Accelerated Exam


Slide 6

Direction and Training

2009 InterviewActing Commissioner Peggy Focarino:•“Training plans include interview training, training on compact prosecution …”•“Key practices: interviews held earlier in prosecution are a benefit to better focus on issues early in the examination process, interviews lead to early indication of allowable subject matter, interview usage later in prosecution may reduce unnecessary RCEs.”

Training: Interviews …

• Interviews are an opportunity to explain rejections, discuss prior art, clarify positions, and resolve issues.

• Interviews can be useful at any stage of the prosecution of an application.

• Interviews can lead to a better understanding of Applicant’s invention.


Slide 8

Interviews (cont.)

• Interviews can bridge the knowledge gap between the Examiner and the Applicant and lead to better understanding each other’s position

• Interviews are an effective method for reaching agreement and advancing prosecution.

• Interviews promote compact prosecution


Slide 9

and Compact Prosecution

• “Applicants and EXAMINERS should request interviews to advance prosecution– A telephone interview coupled with an

Examiner’s Amendment is a preferred practice for placing the application in condition for allowance.” (slide 5)

• Ex parte Quayle: “The examiner should always attempt to advance prosecution and resolve remaining issues through a telephone interview.” (slide 6)


Slide 10

Compact Prosecution (cont.)

• “In Instances where the examiner is aware of a particular amendment that would clearly resolve an issue, SUGGEST IT! (Examiners without appropriate signatory authority should always verify the suggestion with whomever is signing the Office action).” (slide 12)

• “Avoid merely listing claim limitations and pointing to a large block of text in the reference..” (slide 13)


Slide 11

Rules Authorizing an Early Interview

• Accelerated Examination

• Enhanced First Action Interview Pilot

• MPEP 713.02 – Interviews Prior to First Official Action


Slide 12

Accelerated Exams

• Adopted in 2006• Mandatory interview

before FOAM• Patent issues in under

a year• Examination Support

Document


Slide 13

Source: Wendy Garber, June 2, 2009 talk to Bio Partnership Mtg


Slide 14

Commissioner Stoll’s Stats

• FOAM allowances jumped from 3.9% to 25% to 56%

• Enhanced program across all TC’s

• Informal adoption allowed


Slide 15

MPEP 713.02Interview Before FOAM

• Rev. 6, Sept 2007, “encouraged”

• Rev. 5, Aug 2006, “will not be permitted unless”

• Rev. 4, August 2005, request “will not acknowledged … or granted”


Slide 17

Summarizing the Rules

Approach Initiation Starting point

Examiner prep

Limitations

MPEP 713.02

Track in PAIR Informal,

applicant calls As arranged

Timing and willingness

First Action Interview Pilot

Opt-in One page from

Examiner Per program

Brevity of explanation

Accelerated Exam

File ESD Informal,

examiner calls For compact

prosecution ESD


Slide 18

Getting Ready to …

• Teach and learn

• Question and listen

• Argue as a last resort


Slide 19

Effective teaching overcomes:

• Writing, nerdiness, limited budgets and hindsight

• The “broadest reasonable interpretation” of awkward grammar


Slide 20

• Background, objectives and advantage minimized

• Claims too abstract

• Special meanings from specification

• Novel element at end of the claim

Writing Gets in The Way


Slide 21

Nerdiness Gets in The Way

• Geeks rule!!!

• Attorneys can be shy

• Easy to blame the other nerd


Slide 22

Budgets Gets in The Way

• Balanced disposition budgets control examiner behavior

• Good preparation takes time


Slide 23

Hindsight Gets in The Way

• Was the Examiner in high school when you applied?

• Were you in grade school when the Examiner started?

• Ungrounded broadest “reasonable” interpretation


Slide 24

Psyching out the Lesson

• Know your audience

• Figure out the lesson to teach– Before search– With art, before FOAM– After FOAM


Slide 25

What lesson to teach?

• Getting behind 102/103 issues

• 103 issues

• “Easy” 101/112 issues


Slide 27

Sample Lesson Plans

102/103

• Not close• One element missing• Elements recombined• Claim misinterpreted• Cannot tell how examiner

is applying the ref• Reference as a whole• Selling a narrow

distinction

103 combinations

• How combined?• Combination defies

common sense-hindsight• Motivation leads to a

different combination• Destroying or changing

principle of operation for primary reference

• Objective indicia


Slide 28

Getting Ready

• An agenda to make the examiner’s preparation productive

• Pictures

• Focus

• An amendment

• Arrange the interview


Slide 29

Patent Public Advisory Committee Annual Report 2010

User Experience and IT Tools

“During the recent public session of the PPAC, it was noted that the USPTO has accepted desktop collaboration as a tool for enhancing telephonic interviews and for reducing the need for hoteling Examiners to travel to the Office for interviews. It was reported at a recent meeting that several collaboration tools are being evaluated and that they permit Examiners to follow a presentation visually, during a telephonic interview. It was reported that Examiners will appreciate this tool as an effective adjunct in the interview process, particularly when crafting amended claim language.”


Slide 30

Doing It

Structure from Interview Training

• “Give the applicant an opportunity to explain the invention”

• “Openly discuss how inventive concepts are relayed or not relayed in the claims”

• “Discuss prior art and rejections.”


Slide 32

Concrete Structure

• General background• Figures from app• Words of the claims• Figures from refs• Office action

(Amendments at the beginning, middle or end)


Slide 33

The First Five Minutes

• Understanding your audience

• Getting the examiner to talk

• Three-way interview styles


Slide 34

Adobe ConnectGreen Light!

SPE Dave Wiley, April 30, 2010:• “As far as allowing other

practitioners to use Adobe Connect, to my knowledge we have never discouraged or restricted any others from using the program, if other practitioners and patent examiners want to use the program then they can, we can not force either party to use them, but again they can if they wish.”

• Ccs: Stoll, Focarino, Hirshfeld


Slide 36

Demonstration Time


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www.HMBay.com/talks


Slide 39

Wrapping Up

• Agreements need to be really agreed – you’re talking to the judge

• Follow up promptly in writing


Slide 40

About the Speaker

INTELLECTUAL PROPERTY

ATTORNEYS637 Main Street

P.O. Box 366Half Moon Bay, CA 94019

650.712.0340 Branch office in Santa Cruz

www.HMBay.com

Ernie Beffel– U Michigan, Industrial

Engineering and Operations Research ‘78 (summa cum laude)

– Stanford Law School ’81– Trial lawyer and partner,

Hancock Rothert & Bushoft– Co-founder and partner,

Haynes Beffel & Wolfeld


Slide 41

sfipla dec. 14, 2010 at ropers majeski kohn & bentley interviews for compact prosecution dec....

Documents

new tool slide

interviews interviews

interview training

early interview

telephone interview

compact prosecution

compact prosecution

interview usage