IP: Mr. (Patent Attorney) Smith Goes to Washington - Successful patent examiner interviews

In-person interviews are often indispensable for successful patent prosecution.

Patent examiner interviews are often invaluable for advancing prosecution. This article provides some practice tips for the time spent leading to, during, and immediately following an in-person interview at the U.S. Patent and Trademark Office (USPTO).

At the outset, it is helpful to think of the interview process from the examiner’s perspective. It is likely that the examiner and applicant have exchanged written rejections and patentability arguments on numerous issues. Going into an interview, then, the stage has been set for confrontation. The challenge is for applicants to appreciate the examiner’s perspective and offer evidence and guidance as to why the examiner’s positions are unsound. This challenge is best met by preparing diligently for the interview, building a relationship during the interview, and following up on task items promptly after the interview.

During the interview

Commit yourself to building a relationship with the examiner! In this author’s opinion, too many patent attorneys view prosecution as an adversarial procedure whereby attorneys, dressed in suits and with their Ivy League education, puff their chest and wax poetic to their examiner “opponent.” To the contrary, in-person interviews should be two-way conversations. Egos should be checked at the door.

Contributing Author

author image

Eric M. Brusca

Eric M. Brusca, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. His practice focuses on biotechnology patent prosecution for a...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.