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Issue 76 | May 14, 2003
Shedding Light on the Darkest Recesses of File Wrappers: New PTO Interview Rules
 The PTO has created new, more detailed, requirements for interviews, which are explained in the Manual of Patent Examining Procedure (MPEP) § 713.04. This information is relevant to litigators as well as prosecutors, as failure to comply may be a basis for challenging the validity of patents in the future.

In the past, practitioners typically complied with the preexisting duty to memorialize interviews by persuading the examiner to indicate on the Interview Summary Form PTOL-413 that it was not necessary for applicants to supplement the form with a separate record of the substance of the interview. Another common practice of applicants was to insert into their subsequent amendment remarks relating to the interview along with a catchall statement to the effect that a separate record of the substance of the interview is incorporated into the remarks. These practices will need to be modified under the new rules in the majority of cases where the applicant initiates the interview.

As noted in the Blue Pages of the MPEP, which summarize significant changes made by the first revision to the Eighth Edition of the MPEP, MPEP § 713.04 has been changed as follows:

The Interview Summary form PTOL 413 has been revised to delete the box located at the bottom of the form so that examiners will no longer be permitted to check the box to inform applicant that it was not necessary for the applicant to supplement the form by submitting a separate record of the substance of the interview. Effective immediately, pursuant to 37 CFR 1.133(b), it is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file except where the interview was initiated by the examiner and the examiner indicated on the "Examiner Initiated Interview Summary" form, PTOL-413B, that the examiner will provide a written summary. "Examiner Initiated Interview Summary" form, PTOL-413B has been added.

A copy of Form PTOL-413B is provided in the MPEP, as is a corresponding form for submission by applicants who initiate interviews, Form PTOL-413A. The latter form prompts applicants to submit a written agenda for the interview when requesting an interview. Form PTOL 413A also prompts applicants to follow-up the interview with a "complete and proper recordation of the substance of the interview," which is defined in MPEP § 713.04 as including:
  1. a brief description of the nature of any exhibit shown or any demonstration conducted;
  2. identification of the claims discussed;
  3. identification of specific prior art discussed;
  4. identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner;
  5. the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner;
  6. a general indication of any other pertinent matters discussed;
  7. if appropriate, the general results or outcome of the interview; and
  8. in the case of an interview via electronic mail, a paper copy of the Internet e-mail contents MUST be made and placed in the patent application file as required by the Federal Records Act in the same manner as an Examiner Interview Summary Form, PTOL 413, is entered.
This change is hardly good news for patent applicants, who have been known to achieve their goals at an interview without making of record estoppel-creating arguments orally communicated to the examiner. On the other hand, rendering patent validity opinions will be easier and such opinions will be more reliable absent the need to speculate as to what transpired at an interview inadequately described in the prosecution history.

To discuss this topic further, please contact the author, David Tener, at Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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