8 Tips on U.S.P.T.O. Examiner Interviews
by Stites & Harbison, PLLC
The author has practiced patent prosecution close to the U.S. Patent and Trademark Office for more than 30 years. He conducts examiner interviews on a regular basis and has conducted approximately 1,500 to date.
TIP #1 – The Examiner Gets It
Very often office actions give the impression that the examiner just doesn’t get it. A claim with a limitation A is rejected as anticipated by a reference showing B. Clients sometimes express great displeasure with the examiner. But the examiner almost always does get it. The disconnect is a failure to understand two important aspects of the examiner’s job. First, the examiner must give the claim its broadest reasonable interpretation. A claim to a hammer might be rejected based on a wrench, which is the broadest reasonable interpretation since the wrench has a surface which can bang in a nail. Second, it is not the examiner’s function to explain the basis for his/her rejection (such as the fact that giving the claim its broadest reasonable interpretation the hammer reads on a wrench). Engage the examiner, preferably by a phone call or personal interview to determine what he/she is thinking. This is usually the start of a meaningful dialogue.
TIP #2 – Breaking Through
Given a stalemate, as described in Tip #1 above, the last thing that one should do is just argue that a hammer is not the same as a wrench. Intuition alone would suggest that the examiner knows that much. At this point, I would suggest turning the interview around and asking the examiner to explain the rejection because I simply do not understand it. This will invariably bring to light the examiner’s reasons (broadest possible interpretation, etc.) which then provides a launching pad for a meaningful dialogue and a successful result. I would ask the examiner his/her views on what limitations would render the wrench inapplicable as a reference. I might explain how a hammer does things that a wrench cannot do, possibly suggesting further limitations. It is surprising how many of the amendments which are brought up in the course of an interview are not unduly limiting.
TIP #3 – Get to Know the Examiner
Get to know the examiner in advance of the interview. It is important to know whether the examiner tends to be reasonable or unreasonable. Of course the attorney may have met the examiner before, but if not, do not judge the examiner by his/her written office action. Some examiners who seem unreasonable on paper are more reasonable in person, and it makes a big difference to know that. The telephone call setting up the interview should be more than perfunctory. Ask questions. Carry on a brief conversation. Can the interview be conducted in person or by telephone? Does the examiner telecommute, if so from where? An ancillary benefit is that the examiner will get to know the attorney, which could place the examiner at ease going into the interview. Also, of course, see if any of your colleagues have had an interview with this examiner.
TIP #4 – Best Time (And Whether) to Conduct an Interview
Conventional wisdom dictates that interviews be conducted before a final rejection so that there will be an opportunity to freely amend the claims without having to file an RCE. However, at least for economic reasons, this is not usually done. So how does one decide? If the attorney is taking allowed claims or observes clear factual errors in the examiner’s interpretation of the references, which cannot be explained by “broadest reasonable interpretation”, a written response might be adequate. But even here, it is suggested that the attorney make a quick call to the examiner to ask him/her to explain the reasoning with respect to that particular perceived factual error. Either the examiner will agree that there is error, or the attorney will be in a better position to argue the point in the written response. As the issues become more complex and/or there are many claims in issue, a judgment must be made as to whether or not an interview would be productive (given the time restriction discussed in TIP #5 below).
TIP #5 – Conducting the Interview
The attorney needs to be sharply focused since an interview is limited to only a half hour. Generally I would discuss only a single broad independent claim. If there are separate, different, important independent claims, I would save time by just pointing out their differences and/or defer comments until the written response.
The interview will normally have three phases.
Phase One – explain the invention. If the examiner has not understood the invention, or glossed over key limitations, this is the attorney’s opportunity to explain the invention to the examiner in the attorney’s own words, complete with the advantageous results, etc. If the examiner now really understands the invention for the first time, this will be an important break-through.
Phase Two – Discuss the main claim, as is or as proposed to be amended. I would then generally sit back and give the examiner all the time needed to review the claim. Hopefully, and as is usually the case, the examiner now becomes engaged and will start commenting on the claim. Any comments are good, whether favorable or unfavorable, because they give the attorney an indication of what the examiner is looking for to overcome the references.
Phase Three – Discussion of the prior art. I would limit this discussion to the elements of the primary references which are missing from the claim, plus only key portions of the secondary references.
Usually at this point the attorney is into a dialogue with a fully engaged examiner. It is then up to the attorney, having fully prepared for the interview, to know which limitations proposed by the examiner are acceptable to the client and which limitations the attorney would propose, which have been accepted in advance by the client.
TIP #6 – In Person vs. Telephone or Video Interview
All things being equal, an in person interview is preferable. However, this is not always economical. Also, since many examiners telecommute from home, personal interviews with them are not possible. Steps can be taken to maximize the effectiveness of a telephone interview. First, referring to Tip #3 above, get to know the examiner. Where is the examiner telecommuting from? Second, concerted efforts should be made to supply the examiner in advance with whatever documents will be helpful in the course of the interview, such as amended claims, dictionary definitions, marked up copies of the prior art, sketches of the invention, etc. Give some thought as to when to supply such materials, for example far in advance of the interview, or just before the interview.
Video interviews, in theory, would be preferable over telephone interviews. However, from my own experiences as well as tales heard from other attorneys and even from examiners, it is technologically difficult to set up and smoothly run a video interview. Until the procedure is perfected, I would caution against a video interview.
TIP #7 – Inclusion of Inventor or Client Patent Attorney
Examiners do seem to be favorably impressed by the presence of a third party, as that suggests the importance of the invention to the applicant. Also, of course, such third parties can bring valuable knowledge to the interview. Such attendance can be in person or by telephone, depending on what is possible and deemed appropriate. Inventors themselves often have the most knowledge about their inventions, and theoretically an inventor might be the best person to attend the interview. However, apart from economic reasons, there is the problem that inventors, not being legally trained, might say something that could be counter-productive, for example that element X is important, when in fact element X is not disclosed and/or is unduly limiting. So if it does become necessary to include an inventor in an interview, it is vital that that the inventor be prepared in advance, not unlike preparation of a witness before a deposition. Another possibility is for the attorney’s client who is also an attorney (U.S. in-house counsel or foreign patent attorney) to attend.
TIP #8 – What is a Successful Conclusion?
The attorney will virtually never be told at the end of the interview that the examiner would allow the application, since the examiner must always conduct a further search. Hence the best result is that the claims are allowable over the cited prior art. However, I consider the interview successful if the examiner states that in his/her opinion, the main claim, as is or with limitations discussed at the interview will overcome the cited prior art and/or why the references do not show claimed invention. In this case, however, to achieve allowance, the ball is back in the attorney’s court to focus on and discuss those limitations in the response and explain why (as discussed at the interview) they do in fact distinguish over the prior art. Also, it is helpful to keep the dialogue alive by, for example, requesting in the response that the examiner contact the attorney by telephone if it would help to advance the prosecution of the application.
Even if the results of the interview are not favorable, clarification of the examiner’s position can be highly beneficial in helping the attorney decide what further course of action to recommend (e.g. appeal, RCE, continuation or abandon) and what further amendments and/or arguments to present.