The Examiner is Not the Enemy

The Case for Examiner Interviews to Best Serve the Client’s Interests

Opinions tend to vary as to the relative merits of IP attorneys conducting personal interviews with Examiners at the U.S. Patent and Trademark Office. Some clients insist on them; others advocate against. Some IP attorneys welcome them in earnest; others shy away.

In our experience, more times than not, the Examiner Interview serves not only to achieve a better outcome for the client, but it can actually save the client both time and expense in the long term — in many cases, even in the short term. When executed properly and efficiently, what typically results is greater clarity around the specific issues and positions in question, as well as personal rapport with the Examiner that can shorten prosecution of the matter at hand. A well-executed Examiner interview can also serve to nurture a long-term relationship that will benefit both the practitioner and the clients he or she represents in the future.

Many IP attorneys have experienced receiving an Office Action from the USPTO that leaves one aghast and thinking, “How could the Examiner be so off-base?”

It is precisely in these instances where an Examiner Interview can best serve the client and advance the application. Rather than take an adversarial posture, the simple act of conducting the interview can create a collaborative scenario and eliminate the potential for misunderstandings that can result from the digital transmission of legal documents alone.

At a minimum, a conviction that the Examiner’s point of view is unreasonable is usually better communicated (in a tactful manner) initially via a telephonic interview.  It is often easier to tell a story that leads the Examiner to the Applicant’s point of view with the give and take of a conversation as opposed to a written response.  The Examiner has the opportunity to question the Applicant’s position which may crystallize an area of confusion.  Additionally, an interview often allows the Attorney to realize that the Examiner is interpreting the claims in a manner that was not expected and may not be off-base after all.  Without the interview, this position may not have been clear until after a final rejection, or even after an RCE. 

Additionally, one may ask the Examiner if they are of the opinion that there is subject matter in the application that was left unclaimed and isn’t in the cited/existing art. After the interview, the attorney may reconsider or restructure arguments via written response. The interview thus serves to get another bite at the proverbial apple, and does so in a very efficient, very personable way.  Such an approach creates efficiencies that benefit the client as well, since the interview will almost certainly come back to work in the client’s favor throughout the ongoing process.

Best Practices for Conducting Examiner Interviews

For a successful interview, it is best to first fully study the office action, including the rejections and the cited art, and come to an agreement with the Applicant as to a suggested response strategy. With that understanding clarified, following these best practices can help maximize the effect and value of the Examiner interview:

  1. View the Examiner as a Collaborator, Not an Adversary: Approach the interview with the mindset that it’s an opportunity to collaborate with the Examiner, rather than confront him or her.

  2. Initiate a Telephonic Interview for Effective Communication: Initiate a telephone interview to tactfully communicate your disagreement with the Examiner’s point of view. Conversations often facilitate better understanding and allow for a more effective exchange of perspectives.

  3. Use the Interview to Clarify Misinterpretations: Use the interview as a platform for the Examiner to question your position, potentially clarifying areas of confusion or misinterpretation.

  4. Recognize Unexpected Interpretations: Be open to the possibility that the Examiner’s interpretation of claims may not be as off-base as initially perceived, which could only become apparent through the interview process.  For example, the Examiner may have an interpretation of the claims that is broader than what was intended.

  5. Early Agreement Saves Prosecution Costs: Aim to reach an agreement with the Examiner early in prosecution to avoid additional expenses for the client.

  6. Understand the Examiner’s Point of View: Fully comprehend and address the Examiner’s perspective, as it can work to the client’s advantage by refining claim scope and potentially reducing future validity challenges.

  7. Preparation is Key: Study the office action thoroughly, including rejections and cited art, and collaborate with the client on a response strategy before the interview.

  8. Provide Well-Reasoned Arguments: Offer well-thought-out reasons for patentability or proposed claim amendments during the interview, demonstrating preparedness and professionalism.

  9. Submit a Detailed Interview Agenda in Advance: Supply a detailed interview agenda outlining reasons and proposed amendments at least a day or two before the interview to give the Examiner ample time for preparation.

  10. Consider this a Long-Term Value-Add: Many practitioners interface with the same Examiners for years.  Conducting interviews when warranted helps to build a rapport that can only benefit the client in the long run.

Return on Investment

By investing a relatively small amount of time, the interview can allow the Examiner and Applicant to come to an Agreement earlier in prosecution, saving the Applicant the expense of added prosecution. Furthermore, fully understanding and addressing the Examiner’s point of view can add clarity to future filings, as one tends to work with the same Examiners over the course of one’s career. Additionally, the Interview summary allows points of contention and agreements to be put on the record, which may be valuable to a Supervisory Examiner when dealing with a junior Examiner. Putting the summary on the record allows the Supervisory Examiner to overrule the junior Examiner and/or offer additional insight. 

At the end of the day, the Examiner interview may be used to let the Examiner know that your goal is same as his/hers: to determine if there is novel/allowable subject matter.  This format of personal, one-on-one conversation allows for give and take and clarification of misinterpretations or misunderstandings in real time. 

The result of these important and efficient conversations may be used later for filing continuations, so the return on a modest investment continues to compound with each future application.