What is a patent examiner interview?

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

What are the benefits of holding an examiner interview?

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

  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 associated costs of the application process by eliminating subsequent Office Action rejections.

When is an appropriate time to interview 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, if particular prior art rejections may be countered with claim amendments and arguments that require no further explanations, then the marginal benefit of an interview might not be significant.

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 certain limited occasions, it may 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?

Instead of immediately diving into proposed claim amendments, 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 attorney may suggest a number of 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.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com