7 ways to use patent examiner interviews to expedite patent allowance

January 22, 2015
Kenneth Horton
InsideCounsel

One of the most efficient tools to quicker allowance of your patent application is an interview with the patent examiner handling your patent application. Interviews should be used where a dialogue would be more efficient to handle issues than exchanges of written communications. This dialogue shortens the back-and-forth between the examiner and patent counsel and, more importantly, keeps all of the information off the record.

A telephonic or personal interview can be efficient and economical for advancing prosecution of your patent application, or it can be a disaster for patent counsel who is unprepared or who makes potentially damaging admissions on the record. As a former patent examiner, there are several guidelines I follow when preparing for and holding examiner interviews to make sure the former — and not the latter — result is achieved.

Make it personal: If possible, make the interview a personal one rather than a telephonic interview. Almost without exception, the rapport formed with the examiner in a face to face meeting outweighs any costs outlaid for the interview. For example, considering that a typical response to an Office Action costs about $2,500-3,000 and the travel costs are about $1,000, a personal interview will pay for itself several times over if only a single response is saved. In some instances, a personal interview will result in immediate allowance of the patent application and eliminate any additional fees and costs.

Keep it simple: When the issues needed to be addressed with the examiner are simple, such as procedural matters, interviews are quick and extremely cost-effective method. But be careful to not turn a simple issue into a complex one during the interview.

Seek clarity: In situations where the Office Action is unclear or the examiner’s position does not make sense, interviews are very helpful to gain an understanding of what is not being said. These interviews save the time and costs that would otherwise be wasted in working through the miscommunication in writing.

Be specific: The interview should have a specific goal and the issues presented and discussed with the examiner should be limited to those that will achieve that goal. In other words, the interview should not be used as a “fishing expedition” to gauge what the patent examiner might feel is allowable. Although, if the examiner would like to “volunteer” what she feels allowable without having to “fish” for that information, that result is a nice side benefit of an interview.

Seek an understanding: One of the goals for an interview should be for patent counsel handling the application and the examiner to gain an understanding of each other’s position. Ideally, the examiner should agree with the position of counsel. But when that is not possible, the best result is that the examiner understands the position taken by counsel (and vice versa) and why that position is being taken.

Timely request: Request the interview with a phone call or as a separate document, not as part of a reply to an Office Action. Often, a request for an interview filed as part of a reply will be missed by the examiner. If possible, it is more productive to conduct an interview before you file a response since this is the best time to understand the issues and negotiate with the examiner. And if you can arrange it, the best time to have the interview is near the end of the PTO fiscal quarter or the end of the PTO fiscal year.

Concrete recommendation: The best information to present and discuss in an interview is a proposed set of amended claims, rather than extensive and/or detailed arguments. Examiners respond better to a specific proposal, even if no agreement is reached on that proposal. But it is also a good practice to at least indicate the specific sections of the prior art that will be discussed that relate to the proposed claim amendments. This helps set the agenda for the examiner interview and helps the examiner focus on the reasons for the claim amendments.

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