Why conduct a patent examiner interview?

What is a patent examiner interview?

Patent examiners are human. This simple truth is often overlooked in the back-and-forth written communications with the USPTO. An examiner interview is a conversation between your attorney and the USPTO examiner reviewing your patent application. While the interview might take place in person, the discussion typically occurs over the telephone or via a video conference.

Need to conduct an Examiner Interview to overcome a patent rejection? Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help get your patent granted.

What are the benefits of holding an examiner interview?

Perhaps the most compelling reason to hold an Examiner Interview is that it will increase your probability of success. Talking to a patent examiner, especially a more difficult one, can significantly improve your odds of obtaining a utility patent. In certain technology centers and with certain examiners, an examiner interview can boost your odds of success by 2x to 3x.

And it certainly does not hurt to have the examiner interview conducted on your behalf by a patent attorney who is a former USPTO examiner.

What can you gain by having your patent attorney talk to the USPTO Examiner?

Talking to a USPTO patent examiner enables bilateral communication in the following ways not possible with written responses. Your patent attorney can:

  1. Listen to how the examiner reacts to certain observations and arguments;
  2. Create or adjust claim amendments in real-time by adapting to the views expressed by the examiner; and
  3. Clarify concepts using exhibits and visuals, particularly in response to any questions or areas of confusion raised by the examiner.

An effective examiner interview can reduce the pendency and costs of your patent application process by reducing or eliminating subsequent Office Action rejections.

When is an appropriate time to talk to the examiner?

There’s nothing wrong with requesting an examiner interview in response to the first Office Action. However, the effectiveness of such an interview at this earlier stage of prosecution may be limited due to the nature of rejection. For example, certain prior art rejections may be effectively countered with claim amendments and arguments that require no verbal discussions. In these situations, the marginal benefit of an interview might be insignificant.

However, if you’re dealing with a second or subsequent rejection, then an interview may be quite helpful. Even if you cannot reach an agreement, the interview result may provide helpful guidance on the next steps (e.g., appeal versus filing an RCE).

Who should conduct the examiner interview?

Of course, the applicant’s patent practitioner should lead the interview. What may be even better is if the applicant’s representative happens to be a former examiner who understands not only the inner workings of the USPTO, but the thinking process of an examiner. Such ex-examiner attorneys may maintain a certain level of credibility absent in non-examiner practitioners.

In most cases, we believe that a more effective interview would be conducted without the presence of inventors. Examiners tend to talk more freely knowing that inventors are not on the line. If the examiners have any objections, we want to hear them. And examiners are more willing to share negative feedback when they know that no one on the call will be offended. In very limited occasions, it might be helpful to have the inventors participate especially if they hold a demonstration to show certain features.

What should be discussed with the patent examiner?

Immediately diving into proposed claim amendments might not be the best way to start. Instead, it may be useful to set the stage by summarizing key points of novelty that distinguish the patent-pending invention over the prior art.

By establishing this background, both the examiner and patent attorney may suggest claim amendments that aim to capture the distinctions. The claim language may then be tweaked to find the right balance.

How much does an examiner interview cost?

Depending upon the complexity of the issues to be discussed, the attorney’s fee for a typical interview may range from $500 to $750.

What happens after the examiner interview?

If certain agreements were reached during the interview, then a response containing any proposed claim amendments would typically follow. If the interview reveals no possibility of an amendment making any further progress in the prosecution, then the applicant may be better served by going straight to the appeal. In such a case, the interview can still provide useful information not only in determining the next steps, but also what substantive points should be addressed in the next filing.

Need help with your patent application?

Are you dealing with a stubborn examiner who has repeatedly rejected your patent application? Has your current patent lawyer ever spoken to the examiner? If you want our patent team, which includes a former patent examiner, to talk to your examiner, email me at vlin@icaplaw.com or call (949) 223-9623.

Let us see if we can make real progress in your difficult patent application.

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