Tips for a Successful Patent Examination
The Mind of the Patent Examiner SeriesBy: Dennis J. Parad
August 4, 2021
This is the first in a series of articles from a former USPTO patent examiner to help prepare those applying for patents to understand what to expect and how to best assist the application process.
Other articles in this series:
The “interview” is a meeting typically held between the patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a USPTO patent examiner, I would almost always encourage scheduling an interview with the applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner.
Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?
Interviews can be a powerful tool to shorten prosecution. For the applicant, it provides a unique insight into what the examiner thinks about their case while also allowing the applicant to convey critical information to the examiner that may be missing or overlooked during prosecution.
WHEN AND HOW TO INTERVIEW
Interviews can be useful at any stage of prosecution as long as it can resolve issues and help further prosecution. Interviews should be held before prosecution reaches a sticking point. The best time to schedule an interview is usually after the first office action on the merits. In the past, interviews were often held in-person on the USPTO campus in Alexandria, VA. Today, however, video conferencing as is the most practical way to connect with the examiners since most examiners work remotely.
THE EFFECTIVE INTERVIEW
USPTO examiners are only given one hour for the whole interview process, including preparation before the interview, and writing the interview summary afterwards. As such, it is very important to conduct an effective interview in as little time as is necessary. The ideal interview should last no more than 30 minutes. To help the examiner, the applicant or their representative should submit an agenda and any proposed claim amendments at least 24 hours prior to the interview. In addition to facilitating preparation, submitting an agenda can give the examiner time to determine how to approach a favorable outcome based on the proposed strategy proffered by the applicant. After introductions, the actual interview should be short and to the point. Both the examiner and the applicant will write up a detailed summary after the interview is over, including whether an agreement was reached.
THE SUBSTANCE OF THE INTERVIEW
After the first office action, the examiner will generally know what’s the closest prior art and what it takes to overcome the rejections. The applicant should address each issue and ask if the proposed response would likely overcome the respective objection(s) or rejection(s). However, interviews are not a fishing expedition and the examiner cannot provide legal advice. Thus, it is up to the applicant to propose their strategy. The practitioner will need to tell the examiner what the applicant thinks and ask the examiner if that’s something that will advance prosecution and help reach a mutually beneficial outcome. I recommend giving the examiner different strategy options (e.g., different proposed claim amendments). This gives the examiner an opportunity to determine which approach would likely work best. Of course, it goes without saying that being courteous and respectful to the examiner, especially when disagreements inevitably arise, is crucial to maintaining a good relationship and reaching a favorable outcome. Remember that the examiner will likely see every child or sister patent application related to the invention. Getting on the examiner’s good side early will pay dividends later.
If the applicant or their representative sees at least some benefit, conducting an effective interview can expedite prosecution and minimize costs. Done correctly, the interview should provide the applicant further insight into how the examiner thinks and a clearer roadmap for getting the claims allowed.
For more information, please contact Dennis Parad.