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

A live 90-minute premium CLE webinar with interactive Q&A


Thursday, June 20, 2019

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, May 24, 2019

or call 1-800-926-7926

This CLE webinar will guide 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 substance of the interview is only recorded in an Examiner Interview Summary.

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 on 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 prosecute patents effectively.

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.

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Outline

  1. USPTO policy on interviews
    1. First action interview program
  2. Why you should conduct interviews
  3. Understanding the 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 counsel include 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

Burgy, Adriana
Adriana L. Burgy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Sweet, Mark
Mark D. Sweet

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Sweet focuses his practice on portfolio analysis; due diligence investigations; interference proceedings; reissue...  |  Read More

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