Mark Rygiel at Sterne Kessler Goldstein & Fox has recently written about this. Rygiel highlights three separate phases:
Note that the MPEP 713.04 requires a "Substance of Interview" to be included within the record after the scheduled interview has been completed. Therefore it should not be possible (at least in theory) for a patentee or his agents to avoid prosecution history estoppel by making assertions orally instead of in writing, such as in the case of an Office Action Response. In actual practice, however, not all remarks made during the interview find their way into the Substance of Interview (as Mark points out, the Examiner interview presents "reduced estoppel pitfalls").
- "Before First Office Action: Before receiving a first action on the merits, practitioners should consider using the First Action Interview Pilot program. As a potentially less costly alternative to Track One examination, FAIP provides an opportunity to directly communicate with the Examiner very early in prosecution of utility cases. As of December 2016, the first action allowance rate for FAIP cases was 31.1%. Details and requirements of the program are found at: https://www.uspto.gov/patents-application-process/applying-online/full-first-action-interview-pilot-program.
- After First Office Action: Interviews are usually granted at this stage. The Examiner will likely require an interview agenda, and the developing trend is that the Examiner will make the agenda of record even if it is submitted with a request that it not be entered. Still, the interview provides an efficient way to present arguments to the Examiner with fewer remarks on the record and reduced estoppel pitfalls. Consider conducting the interview before or after filing a reply depending on the complexity of the case and whether amendments are an option.
- After Final Office Action: Although the Examiner may exercise discretion in granting an interview after final, the MPEP indicates that one interview after final is permitted. When willing to narrow an independent claim by amendment, interviewing through the After Final Consideration Program 2.0 is a particularly effective tool. Without an additional fee for the Applicant and with additional search time for the Examiner, the parties may proceed in a collaborative attempt to reach allowance after final. Examiners are typically motivated to conduct a quality search and to carefully consider targeted amendments to reach a resolution in the case."
Note that the MPEP 713.04 requires a "Substance of Interview" to be included within the record after the scheduled interview has been completed. Therefore it should not be possible (at least in theory) for a patentee or his agents to avoid prosecution history estoppel by making assertions orally instead of in writing, such as in the case of an Office Action Response. In actual practice, however, not all remarks made during the interview find their way into the Substance of Interview (as Mark points out, the Examiner interview presents "reduced estoppel pitfalls").
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