Patent Examiner Interview: 5 Tips for Preparing
Although hundreds of thousands of patent applications are filed every year with the U.S. Patent and Trademark Office (USPTO), there are only a few thousand patent examiners who are responsible for issuing actions on them. Written correspondence between a patent applicant, or a representative, and an examiner may clear up issues in drafted claims, but no form such as misunderstandings, no form of communication is better for getting all parties on the same page than communicating face-to-face. Examiner interviews, which can be conducted over the phone or in person, are an important part of the patent prosecution process and can be crucial to your patent success. Examiner interviews can be requested at almost any stage of the patent prosecution process, and can save both time and money in your application, as resolving issues faster can reduce back-and-forth office actions. Here are some tips if you’re considering scheduling an interview with your patent advisor.
Tip #1: Make Contact Early
Contacting a patent examiner to set up an interview as early as possible is crucial, especially when a party wants to conduct the interview in person. Examiner interviews have been growing in popularity, so the more time you can allow for scheduling an interview, the better the chances are that an examiner will be available. Also, be prompt in responding to an examiner who returns your call for scheduling; USPTO best practices for examiner interviews suggest that calls should be returned by the applicant within one business day. If you must leave a voicemail, make sure that it includes all pertinent information such as availability, time zone, and contact information for alternative contacts in case the caller cannot be reached.
Tip #2: Prepare an Agenda
Whether or not the patent examiner requests one, it is always a good idea to prepare an agenda that will help explain what is to be accomplished during the interview. Agendas should contain details pertaining to any proposed amendments, relevant arguments supporting patent claims, and any other pertinent evidence. This agenda will be very useful to an examiner who can review it to better understand the intended purpose of the interview. The agenda can also help the applicant be fully prepared for the interview. Agendas should reflect discussion items included in Form PTOL-413A, filed to initiate the interview request.
The agenda should be prepared ahead of time and can be sent via email or fax to the examiner to set the expectations for focus of the interview. Sending the agenda in advance is a best practice that can be beneficial regardless of the examiner requesting it. This allows the examiner to review arguments or amendments alone and not feel put on the spot when the interview arrives. It can also help to save valuable time in your interview for discussion instead of beginning formalities.
Tip #3: Explaining Inventiveness
Most often, examiner interviews are scheduled in response to initial office actions which have declared claims as invalid or which have brought forward new prior art. Before showing up to the interview, anyone representing a patent applicant must be able to clearly explain what makes their idea inventive and non-obvious. It will be important to point out differences from the prior art on record. Applicants should also be able to communicate how the inventive nature of the technology is reflected by the proposed claims.
Tip #4: Work With, Not Against, the Examiner
It is extremely important to maintain a professional demeanor throughout the course of the interview; although the examiner may critique an argument, there is no reason to make the relationship adversarial in any way. Both parties in the conversation are simply interested in finding the best way to define an invention to improve its value through a patent. You may find that providing background on the invention and the problems it was created to solve can better support your claims. Establishing common ground is very helpful and it may help the process to find points of agreement that already exist. However, an applicant still has every right to ask an examiner for clarification on a decision and not settle for the argument that a claim is simply “too broad.” Remember, this is the examiner’s job. Although you may be frustrated with their responses, they are following important standards. The examiner can hear you, understand your reasoning, like your purpose and still not agree with your claims.
Tip #5: Don’t Forget the Applicant Summary
The USPTO requires a written record of all actions taken during the course of patent prosecution, and examiner interviews are no different. Before an interview ends, an applicant may find it useful to clarify with an examiner, who will also have to file a written report, what those reports should contain. Remember, your agenda is also subject to being included. Comments included in the summary should be tailored to succinctly note arguments made by the patent applicant, agreements established between the examiner and applicant as well as any further points of disagreement on certain claims. Detailed notes and reporting will also help the applicant as they move forward improving their patent. Start your report as soon as possible after your meeting, don’t wait weeks and forget defining information.
Patent applicants may feel an understandable amount of anxiety prior to an examiner interview. To help, the USPTO makes interview training tools available online. These are designed to help an applicant prepare for an interview, whether you are going to be in-office or over the phone.
Our own LexisNexis PatentAdvisor tools give applicants the ability to research an examiner’s record in any technology center.
Make sure that you’re prepared with the information you need to have the most productive examiner interview possible.