USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, March 21, 2017
Recorded event now available


This CLE webinar will provide guidance to patent counsel on leveraging interviews with United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into conducting the interviews and offer strategies for interacting with patent examiners.

Description

Patent examiners initially reject a large percentage of patent applications. Conducting an interview with the patent examiner handling the patent application is one of the most efficient ways to advance the application. Having a dialogue with the examiner minimizes the back-and-forth between the examiner and patent counsel. Perhaps more importantly, the conversation is off the record.

Counsel must understand that the interview should not be a fishing expedition. Counsel should come in prepared, having reviewed the case and be ready to state its argument with multiple fall back positions. The examiners generally ask for an agenda with proposed claim amendments. Interviews also provide an opportunity to understand the examiner’s position in an office action.

While interviewing the patent examiner can move the prosecution of the patent application forward, if patent counsel is not prepared or makes damaging admissions, it can be a disaster. Patent counsel must understand when and how to interview patent examiners to effectively prosecute patents.

Listen as our authoritative panel of patent attorneys offers guidance for patent examiner interviews to advance patent prosecution. The panel will discuss the USPTO policy on interviews and provide insights to work within the system, including strategies for preparing for and interacting with examiners. The panel will offer guidance for conducting and leveraging examiner interviews.

Outline

  1. USPTO policy on interviews
    1. First action interview program
  2. Why you should conduct interviews
  3. Understanding USPTO system and adapting the interview to accommodate that system
  4. Best practices for conducting and concluding examiner interviews
    1. Preparation
    2. Agenda
    3. Presenting amended claims

Benefits

The panel will review these and other key issues:

  • What should be included in an interview agenda and what should be avoided?
  • How can patent counsel use an examiner interview to the client’s advantage?
  • How and when should patent counsel interact with examiners for effective and efficient prosecution?

Faculty

Adriana L. Burgy, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

Kenneth E. Horton, Shareholder
Kirton McConkie, Salt Lake City

Mr. Horton’s practice includes domestic and foreign patent prosecution, patent opinions, intellectual property litigation (including both state and federal court actions), domestic and foreign trademark prosecution, trademark opinions, copyrights, trade secrets, IP evaluations and due diligence, as well as technology and IP agreements. Mr. Horton has extensive experience in both pharmaceutical and semiconductor technologies. He is Associate Professor as Westminster College’s Gore School of Business on IP strategy.

Marvin Petry, Member
Stites & Harbison, Alexandria, Va.

Over the past 30 years, Mr. Petry has litigated 40-plus infringement actions and prosecuted patents and trademarks before the U.S. Patent and Trademark Office for international, Fortune 500 and midsized U.S. clients, including many patents of major economic significance. He regularly counsels clients on validity and infringement issues. Mr. Petry has lectured extensively on various patent law topics, including the taxation of intellectual property and is a former adjunct professor at Georgetown University Law School.


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Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

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Johnson Law Office

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Patent Law Advisory Board

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

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