Interview Agenda for Patent Examiner Interview

Summary

This is a template for an agenda for an interview with a patent examiner. The interview agenda should be provided to the examiner at least 24 hours before the scheduled interview. This template includes practical guidance and drafting notes. The purpose of an interview agenda is to give the examiner an idea of what you intend to discuss during the interview. There are no rules for the content of the interview agenda. You can be as detailed or concise as you like. However, keep in mind that the interview agenda becomes part of the file history, so there is a possibility that it could be used in later litigation as a basis for prosecution history estoppel or disclaimer that would limit claim scope. The interview agenda is typically attached as an appendix to the Examiner’s Interview Summary which appears in the prosecution history. The format of the interview agenda is based on personal preference. Some patent practitioners like to write a rough draft of a formal response to the rejection and then copy their arguments and proposed amended claims into the interview agenda. The advantage of this approach is that the interview will likely be short since the examiner has already had the time to review your proposals. This approach also allows you to present detailed evidence in a way that may be challenging to explain fully during the discussion with the examiner. The disadvantage of this approach is that the interview may result in an entirely different strategy and/or set of claim amendments being required, thus causing you to, essentially, spend the time drafting two different responses. If you are billing your clients an hourly rate, this may be a concern and is something you should make your clients aware of. Other practitioners prefer to keep the agenda concise by just identifying the broad issues they intend to address during the interview. The advantage of this approach is that it limits any prosecution history estoppel or disclaimer that may later be raised based on statements in the interview agenda. Regardless of which format you choose, consider including the following header on every page: "For Discussion Purposes Only." Since the agenda becomes part of the file history, it helps to clarify that the applicant does not intend to make formal arguments or claim amendments in the agenda. For the same reason, each section in the interview agenda should be labeled "proposed." In addition, each page should be numbered to ensure that every page has been sent to the examiner and to facilitate reference to a particular page in the future, if necessary. The header of each page should also include identifying information, including the application number and the attorney docket number. The interview agenda may be faxed to the examiner at the fax number given at the end of the office or sent by email. Most examiners prefer receiving the interview agenda by email. Note that you must first file an Authorization for Internet Communications form before you can send an email to the examiner (USPTO Form PTO/SB/439). Note that the email addresses for USPTO employees have the following format: [first name].[last name]@uspto.gov. Thus, Examiner John B. Smith would have the following email address: john.smith@uspto.gov. For additional discussion of examiner interviews, see Patent Examiner Interviews.