IP: The Patent Office examiner is your friend

How to conduct an examiner interview

While most applicants only use the examiner interview sparingly during patent prosecution, strategic and judicious use of examiner interviews often yields fruitful results. Examiner interviews can help the applicant understand the examiner’s position while minimizing prosecution history estoppel issues. An examiner interview should be conducted when the office action lends itself to different interpretations or when the examiner has maintained a position that is unreasonable.

In-person vs. telephone

One of the important choices concerning examiner interviews is deciding whether to conduct the interview in-person or by telephone. Telephone interviews are most appropriate when both the examiner and applicant’s representative can review the same documents without difficulty, or when conducting a non-contentious interview. In-person interviews allow for understanding non-verbal cues from an examiner. In many cases, cost considerations might seem to favor telephone interviews, but there are some instances where face-to-face interaction increases the overall efficiency of prosecution.

Examiner agendas

Many examiners require the applicant’s representative to submit an agenda before the interview. When calling the examiner to schedule the interview, it is important to ask whether he or she expects an agenda and to ask about the level of detail the examiner would like. In many cases, an agenda is helpful because it focuses the examiner on the issues to be discussed. In order to keep the record clean, with minimal noise, it is recommended to have a focused but broad agenda.

However, some examiners may require a detailed agenda. In order to facilitate the transmission of an agenda, the U.S. Patent and Trademark Office (PTO) has created a form called an “Applicant Initiated Interview Request Form” or PTOL-413A. In general, it is advised that an additional sheet with further details be provided, but most examiners are willing to accept the form alone.

Conduct

It is important to approach the interview with the examiner in a friendly and professional manner. The examiner is the person making the initial determination of whether a patent should be granted on the application. If a friendly tone is set, the examiner might offer suggestions or other information regarding PTO procedures. While most procedures are public, understanding the examiner’s perspective regarding procedures can go a long way in efficiently handling the interview and aid the representative when responding to future office actions. It is important to maintain composure, even if the examiner takes positions that do not seem plausible. If you become angry or upset, it will be difficult to maintain a cordial conversation.

Tips

When conducting an examiner interview, it is important to listen to both what the examiner is saying and not saying. While many representatives begin the interview by providing an overview of the technology, it can be better to let the examiner lead the discussion, at least initially. If the examiner is having difficulty articulating certain portions of the rejection, this is a clue as to what points might facilitate allowance of the application. If the examiner is forced to articulate the reasons for the rejection, he or she may more easily understand the flaws with her arguments. Additionally, the silence of the examiner on certain areas can be explored for further discussion.

Conclusion

It is important to act appropriately when conducting an examiner interview. While the examiner is not completely a friend, maintaining a cordial, professional relationship will make it easier to understand the strengths and weaknesses of the examiner’s position.

Contributing Author

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Andrew Weaver

Andrew Z. Weaver is a partner at Novak Druce + Quigg where his practice is focused on the prosecution and reexaminations of patents. He can be reached...

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