Only a few thousand patent examiners are responsible for issuing actions on hundreds of thousands of patent applications that are filed every year with the U.S. Patent and Trademark Office. Although written correspondence between a patent applicant, or a representative, and an examiner may clear up issues such as misunderstandings in drafted claims, no form of communication is better than face-to-face for getting all parties on the same page. Examiner interviews, which can be conducted over the phone or in person, are an important part of the patent prosecution process. Here are some tips if you’re considering scheduling an interview with your patent advisor.
Tip #1: Make Contact Early
Contacting a patent examiner early to set up an interview is crucial, especially when a party wants to conduct the interview in person. The more time you can allow for 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 within one business day. If you must leave a voicemail, make sure that it includes 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. Agendas should reflect discussion items included in Form PTOL-413A, filed to initiate the interview request.
Tip #3: Explaining Inventiveness
Most often, examiner interviews are scheduled in response to initial office actions which have declared claims as invalid or 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. Establishing common ground is very helpful and it may help the process to find points of agreement. 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.”
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. 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.
Patent applicants may feel an understandable amount of anxiety prior to an examiner interview. The USPTO makes interview training tools available online which are designed to help an applicant prepare for an interview. 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.