In the December 9, 2009 issue of the Fed. Reg., the PTO requested public comments on a wide range of patent preparation and prosecution topics, from “Finding the Best Prior Art” to issuing and responding to first office actions and “proper use of interviews.” (Request attached.) The PTO recently extended the response deadline from Feb. 8th until March 8th. Clearly, any currrent prep/pros attorney or agent could write a textbook on the five topics “in which the PTO is particularly interested” and you are encouraged to reply by email. So I spent some time on one of the topics (and tried to lobby for the return of Prosecution Specialists, at least to 1600). My comments are below. I hope you will take time to send in your thoughts. After all, they don’t ask that often.
Following are my comments on Section V(5) -Proper Use of Interviews.
Examiners should be willing to, and encouraged, to grant interviews prior to a first action on the merits as well as after final rejection. Examiners should get credit for more than one interview per application.
Examiners should be responsive to requests that their Supervisor participate, and should be clear about whether or not such participation is required. Examiners should offer to reschedule interviews when a Supervisor unexpectedly cannot participate, with an appropriate amount of lead time.
Examiners or attorneys should be encouraged to propose amended, or even new, claims orally or in writing prior to the interview. If not presented at the interview itself, such claims would not become part of the record.
A more general suggestion: The USPTO should re-establish the position(s) of Prosecution Specialist(s) in the Pharma/Biotech art units (eg, 1600). These positons were once held by Richard Schwartz, Brian Stanton and Margaret Parr. The Specialists acted as ombudsmen for the applicants and attempted to mediate between Examiners and applicants, particularly in cases in which agreement could not be reached on focussed issues and/or the dispute appeared to turn on a particular point of law. The Specialists used to have real authority; they would review actions without identifying the particular application in question (eg,, so that the applicant would not suffer retaliation if the Specialist concluded that applicant’s position was incorrect). If they felt that applicant’s position was correct, they had the power to direct the Examiner to allow some or all of the claims, or at least could prevent the Examiner from filing an Answer if the claims went up on appeal. I worked effectively and regularly with Prosecution Specialists, until Brian Stanton left the Office and the program was, for all practical purposes, ended.
(This is a completely different approach than “second pair of eyes” review of Examiners’ allowances, which applicants took no part in, and which encouraged Examiner’s not to allow applications (for fear they would be found to have erred, and be penalized)).
Warren D. Woessner