A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. The requirement may be satisfied by submitting a transcript generated during an electronic mail or message exchange. See 37 CFR 1.133(b) and MPEP §§ 502.03 and 713.01.
37 CFR 1.133 Interviews.
- (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.
37 CFR 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
The action of the U.S. Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews. Accordingly, examiners must complete an Interview Summary form for each interview where a matter of substance has been discussed during the interview. For an applicant-initiated interview, it is the responsibility of the applicant to make the substance of the interview of record in the application file and it is the examiner’s responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability. Form PTOL-413, reproduced below, may be used to record the substance of an applicant-initiated interview.
For an examiner-initiated interview, it is the responsibility of the examiner to make the substance of the interview of record either on an Interview Summary form or, when the interview results in allowance of the application, by incorporating a complete record of the interview in an examiner’s amendment. Form PTOL-413B, reproduced below, may be used to record the substance of an Examiner-initiated interview.
See subsection I below for a list of the items to be included for complete and proper recordation of an interview. Discussions regarding only procedural matters, directed solely to restriction requirements for which interview recordation is otherwise provided for in MPEP § 812.01, or pointing out typographical errors in Office actions or the like, are excluded from the interview recordation procedures.
For both applicant-initiated and examiner-initiated interviews, it is recommended the examiner begin completing an Interview Summary form in advance of the interview by identifying the rejections, claims and prior art documents to be discussed. The examiner should complete the “Substance of the Interview” portion of the Interview Summary form at the conclusion of the interview. If applicant initiated the interview using the “Applicant Initiated Interview Request,” a copy of completed form PTOL-413A should be included as an attachment to the Interview Summary form. Upon completion of the interview, a copy of the Interview Summary form should be given to the applicant (or applicant’s patent practitioner) along with any attachments.
The Interview Summary form shall include the date the interview was held and the substance of the interview shall be properly recorded. In a personal interview, a duplicate copy of the Interview Summary form along with any attachment(s) is given to the applicant (or applicant’s patent practitioner) at the conclusion of the interview. In the case of a telephonic, electronic mail, electronic message system or video conference interview, the copy is mailed to the applicant’s correspondence address either with or prior to the next official communication. A copy of the form may be faxed or, if the Office has appropriate authorization to conduct communications via the Internet, a copy of the form may be e-mailed to applicant (or applicant’s attorney or agent) at the conclusion of the interview. If additional correspondence from the examiner is not likely before an allowance or if other circumstances dictate, the Interview Summary form should be mailed promptly after the telephonic, electronic mail, electronic message system or video conference interview rather than with the next official communication.
The Interview Summary form provides for recordation of the following information:
- (A) application number;
- (B) name of applicant;
- (C) name of examiner;
- (D) date of interview;
- (E) type of interview (personal, telephonic, or WebEx/video conference);
- (F) name of participant(s) (applicant, applicant’s representative, etc.);
- (G) an indication whether or not an exhibit was shown or a demonstration conducted;
- (H) an identification of the claims discussed;
- (I) an identification of the specific prior art discussed;
- (J) an indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by attachment of a copy of amendments or claims agreed as being allowable). (Agreements as to allowability are tentative and do not restrict further action by the examiner to the contrary.);
- (K) the signature of the examiner who conducted the interview;
- (L) names of other personnel participating in the interview.
In the case of an applicant-initiated interview, the Interview Summary form will include a reminder indicating it is the applicant’s responsibility to record the substance of the interview. It is desirable that the examiner also orally remind the applicant of the applicant’s obligation to record the substance of the interview in each case where the interview was not initiated by the examiner. Where an interview initiated by the applicant results in the allowance of the application, the applicant is advised to file a written record of the substance of the interview as soon as possible making of record the items listed below to prevent any possible delays in the issuance of a patent.
I. ITEMS REQUIRED IN A COMPLETE AND PROPER SUMMARY
The complete and proper recordation of the substance of any interview should include or be supplemented to include at least the following applicable items:
- (A) a brief description of the nature of any exhibit shown or any demonstration conducted;
- (B) identification of the claims discussed;
- (C) identification of specific prior art discussed;
- (D) identification of the principal proposed amendments of a substantive nature discussed (may refer to a copy attached to the Interview Summary form completed by the examiner);
- (E) 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;
- (F) a general indication of any other pertinent matters discussed;
- (G) if appropriate, the general results or outcome of the interview; and
- (H) in the case of an interview via electronic mail a paper copy of the contents exchanged over the internet 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 is entered.
II. EXAMINER TO CHECK FOR ACCURACY
Examiners are expected to carefully review the applicant’s record of the substance of an interview. If the record is not complete or accurate, the examiner may give the applicant a 2-month time period to complete the reply under 37 CFR 1.135(c) where the record of the substance of the interview is in a reply to a non-final Office action.
¶ 7.84 Amendment Is Non-Responsive to Interview
The reply filed on  is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the  interview.  Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).
- 1. In bracket 2, insert the date of the interview.
- 2. In bracket 3, explain the deficiencies.
Applicant’s summary of what took place at the interview should be carefully checked to ensure the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability, it should be pointed out in the next Office communication from the examiner (e.g., rejection, interview summary, or notice of allowability), wherein the examiner should set forth an accurate version of the examiner’s argument or statement.
If the record is complete and accurate, the examiner should electronically annotate the record with the indication “Interview record OK” on the paper recording the substance of the interview.