Examiner Interviews: Get on the Examiner's Side

This post is a summary of a video interview of Fresh expert Cliff Hyra.

If you’ve filed a patent in the US, you may be familiar with how long and drawn out the process can be. Multiple Office Actions, lots of invoices and waiting for many years might have you thinking “Surely there’s a better way?” We like to think there is: Examiner Interviews.

So, what is an Examiner Interview?

An Examiner Interview is a discussion between your US attorney and the USPTO Patent Examiner assigned to your application. These interviews can be done in person, over the phone or via web conferences (which we are all well practiced at now!)

When it comes to prosecuting your patent in the US, we believe that Examiner Interviews are one of the most underutilized tools available.

When is an Examiner Interview a good idea?

An Examiner Interview is nearly* always a good idea.

It is the single best way to speed up examination in the US and is a great tool for producing stronger patents. It limits the number of arguments that go on record, which could cause estoppel or disclaimer issues should you have to litigate.

It is also a cost-effective way to proceed as you are prosecuting for a shorter period of time and, in theory, you will avoid further Office Actions. Interviews are especially helpful in avoiding “wasted” responses, after which the Examiner repeats the same rejections in a new Office Action. However, it is worth noting that costs will increase in the very short term, as the interview is an additional step in the process, which carries additional cost.

Interviews can be carried out after receiving an Office Action and prior to filing a response (most common), after your response has been filed, or even before receiving your first Office Action or after filing a notice of appeal.

*we say nearly because it may not be the best use of an Examiner Interview if you have a totally new claim set that the Examiner has never seen or searched before.

Are there any tips/tricks to getting the most out of Examiner Interviews?

Yes! There are a few things you can do that may help:

1) Schedule an Interview for early in the morning. Examiners are people just like us and research shows that people are generally most productive & cooperative earlier in the day.

2) Schedule an interview at the end of a quarter (if possible). Examiners have production quotas to meet and at the end of a quarter, many will be working hard to do so. If they see an opportunity for an allowance, they will likely be open to having an interview, which is beneficial for both parties.

3) Be cooperative! Although Examiners may sometimes feel like adversaries, you are on the same side. Both parties want to arrive at allowable subject matter.

4) Ask the Examiner indirectly about the application. This will help you get a good feel for the application itself. For example:

- “You’re familiar with the prior art and technical field, do you think you’ll be able to find prior art?” If they say yes, it opens the discussion as to how you might overcome this. If they say no, you may expect an allowance.

- “Is there anything we haven’t discussed that is patentable/new?” Although they may not always answer this, sometimes an Examiner will volunteer some really useful information.

Despite the above tips, it is important to remember that Examiners also have a quality metric that they must adhere to and they can’t allow patents solely in order to hit their targets.

Preparing for an Examiner Interview

Preparation is key when it comes to Examiner Interviews. The aim is to work with the Examiner towards an allowance and to aid this, you need to be able to navigate the conversation with ease. Your attorney will do the lion’s share of the preparation, but you may be able to assist. Here’s what will help:

1) An interview agenda, which should outline the key areas of discussion, must be sent to

the Examiner at least 24 hours before the interview. It should be sent earlier than this if possible, as this will allow the Examiner time to prepare, which is usually beneficial for you.

2) Propose some claim amendments for discussion. The Examiner may prepare their own, but your proposal could be something they did not consider.

3) Have at hand any prior art cited/identified and highlight any key points for discussion. Prepare a high-level overview as to the difference between your application & the prior art.

4) Have your claim set ready and highlight any key points for discussion.

What happens after an interview?

After an Examiner Interview you will be sent an Interview Summary. If the Interview was conducted in person, this will usually be prepared with you and you may get a draft immediately.

However, if the Interview was held via Web Conference or over the phone (which is much more likely right now) then it may take a couple of days. Still, the contents of this summary should be discussed at the end of the interview. In this instance, it is important to keep the interview fresh in both your and the Examiner’s mind, especially if they have made concessions and indicated allowable subject matter. You should ensure that these are included in the Interview Summary, to avoid them being forgotten in the future. If you do not have the Summary in 1-2 days, it would be worth sending a gentle reminder and possibly asking for a draft/faxed copy before the official summary is sent.

Following the Interview Summary from the Examiner, you will also have to provide an Applicant Summary in your next response. Here, you will want to summarise the most crucial points - any indicated/agreed allowable subject matter and/or concessions.

Then what?

After your interview you will need to prepare a response based on your discussion with the Examiner.

Examiners are normally happy to review a draft of the response/revised claim set before filing. If you email this over to them, they can provide some feedback and confirm whether you are on the right track.

Ideally, after completing this process, your application will be allowed (Issued/granted). You will have saved yourself some time and money and you will have a stronger patent.

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