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 ...more »

Submitted by (@steve.sax)
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Q3: Interviews

Provide Simple Pre-Search Interview Process

Examiners often seem to have only cursory understanding of invention before initial search. Often only until interviewing at second office action do they say "ah ha". Allow for simple pre-search interview---no onerous requirements, no discussion about prior art on the record. Simply present and explain the invention, invite examiner questions and examiner can ask 112 issues regarding the claims before the initial search. ...more »

Submitted by (@waynesobon)
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Q2: Changes in procedure or regulation

Examiner suggestions could make communications true negotiations

In a true negotiation, both parties offer suggestions for an agreement. But in many patent prosecutions, the suggestions for agreed-upon claims come only from the applicants. The Examiner's only role in many cases is to rule on the applicant's suggestions, so these cases are not the subject of true negotiations. I personally welcome suggestions from Examiners for claim language/ claim scope, even when those suggestions ...more »

Submitted by (@johnogilvie)
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