Why Talking to Your Patent Examiner Can Help
A call to your patent examiner can make all the difference. Talking to your examiner is a combination of art and science. Though your team should be prepared with all the technical details they wish to present, recognize the human psychology factor of talking to another human being. From our perspective, the goals of an examiner call are to persuade and discover information.
Need to get your patent application allowed? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help overcome Office Action rejections.
Why You Should Not Be the One to Call Your Patent Examiner
I’ve heard many examiners say that they prefer that the client (the inventor) not participate in an examiner interview. Sometimes, examiners will hold back comments out of fear of offending the client.
When the inventor is not on the call, examiners can speak freely. When we’ve had productive talks with examiners, the conversations are typically fluid. The examiner might volunteer some insights or objections.
As we listen carefully to what the examiner says, we might spontaneously offer suggested claim amendments or tactful points about why the examiner should think differently. The absence of the client facilitates more open conversations.
What to Do Before Your Patent Attorney Talks to the Examiner
Your patent attorney should have a game plan for suggesting ways to overcome the rejections. Recognize, however, that exmainer calls don’t always go according to plan. It helps to stay fluid during the call and pivot if and when necessary.
Some examiners prefer to receive an interview agenda prior to the scheduled call. It helps them prepare for the call.
If the examiner is reasonable, the advanced notice might cause them to think through some helpful options that they can raise during the call.
What are the Objectives to Accomplish in a Call to Your Patent Examiner?
The objectives in talking to a patent examiner will depend upon the Office Action rejections. You are not necessarily trying to win an argument in an examiner interview. Instead, your patent attorney should be gaining insight as to which claim amendments and arguments will be more effective versus those which will be a waste of time. The examiner’s feedback will help inform the direction of your forthcoming written Office Action response.
Prior Art Rejections: What to Say to the Examiner About Rejections Under Section 102 or 103
When dealing with prior art rejections, it helps to have some suggested claim amendments ready to discuss with the examiner. A succinct summary of the key novel features of your invention can help. You can also contrast the better technology of the applied-for invention with the products disclosed in the prior art references.
We find these background summaries help set the stage for introducing claim amendments that capture key novel features.
Other Office Action Rejections
Your patent attorney may want to discuss rejections that are not based on the prior art. For example, the examiner might object to the use of certain claim language which they feel would be unsupported by the specification. Your patent attorney should be prepared to provide specific citations to the specification and drawings that provide support for the objected claim language.
How Do You Know If a Talk with the Patent Examiner Was Successful?
Most examiner interviews do not result in allowances. One key reason is that examiners will always have the right to search the prior art further to look for any new features introduced by your claim amendments.
Realistically, a successful examiner interview will result in a preliminary agreement that current rejections would be overcome by the proposed claim amendments.
How Would a Talk with the Patent Examiner Guide Your Next Office Action Response
A productive call to the examiner might lead your patent attorney to revise the written response to an Office Action. For example, the examiner might reveal that certain claim amendments and arguments would carry no weight.
Knowledge of their position can lead to a more efficacious Office Action response with amendments and arguments that will carry more weight.
Can You Get Another Office Action After an Examiner Interview?
Unfortunately, it is not uncommon to receive a further Office Action after conducting an examiner interview. There are no guarantees that an examiner call, even if it seemed to go well, will lead to an allowance.
How Many Patent Examiner Calls Can Be Made?
Most patent examiners will entertain at least one call per Office Action. Unless we are dealing with exceptional circumstances, we try to respect that limit so as to avoid annoying the examiner.
It might make more sense to request an examiner interview after a non-final or final Office Action has been issued. The general USPTO policy is that interviews will not be granted before the first Office Action unless the application is a child application.
