Q3: Interviews

The Pre-Exam Conference, Idea Further Elaborated

A couple points were brought out about a pre-Exam Interview concept, but may be buried in the comments or were in other discussions, so I just wanted to flush out the idea on its own. The idea is edited a bit, and additional points are listed below it:

 

(To review:

Before FAOM, if the Examiner feels that the claims are overly broad or contain a 112 error that would hinder prosecution, then the Examiner can call the Applicant/Representative to schedule a Pre-Exam Conference in order to work out a preliminary amendment. The Examiner should be given more than the usual hour of othertime (say perhaps 3-4 hours), but the requirement would be that attached to the Interview Summary is an 892 showing the relevant art the Examiner is using as evidence to warrant the preliminary amendment. This would not be a full examination, but a "quasi" round of prosecution just to correct these basic issues - the Examiner would get a few hours as opposed to just one hour of othertime, and there would be search and examination to show for it. 112 errors can be fixed this way with a description of the error attached to the Interview Summary in lieu of the 892. The goal though would be to get a preliminary amendment entered that advances the claim recitation, before a full FAOM is performed. A pilot program by PTO could see how effective this is in accomplishing that goal).

 

Although on the surface this is similar to the First Action Interview Pilot, there are some major differences. For one, the Examiner would still later make a FAOM (first Action on merits), and thus the applicant would not lose a round of prosecution. But meanwhile the Examiner would get appropriate othertime (3-4 hours) to do this pre-FAOM Interview. There would be an 892 attached but not a written rejection (of course if allowance is reached then the NOA would be sent out with the Interview Summary) - the point is that the cited art and possible rejections would be discussed at the Interview itself and the Applicant/Representative would have enough substance to determine whether a preliminary amendment should be filed, and to work that preliminary amendment out with the Examiner. Sometimes this could lead to allowance right away, but even if not, the claims would still be further narrowed, the Examiner would be given enough time, and all without having to lose a round (or wait for a new cycle) to continue prosecution. Another difference in the pre-FAOM idea is that the Examiner initiates the request - this greatly clears up many matters that would unnecessarily have delayed focus on the merits, such as claims that the Examiner feels are overly broad, as well as 112 issues. In short, this puts all parties on the same page right from the very start.

 

101 issues can be fixed too during the conference, although if that were the only concern of the Examiner before full examination, then probably it would not require a drawn out process, but be corrected on FAOM.

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Idea No. 32