What are Examiner Interviews? How should I prepare and conduct one?

Examiner interviews are good ways that an application (a patent attorney and/or inventor) can discuss an office action and the related art with the issuing Examiner. Typically, Examiners will issue office actions with 35 USC 102 or 35 USC 103 with art they use to meet each and every element of your claims. In my experience there are three types of office actions, where examiner interviews may be helpful for each. Examiner interviews are also helpful because they may limit prosecution history estoppel, and lead to shorten the written record and responses in Office Actions.

The first type of office action is a great office action, where it appears that the cited art actually teaches the claimed limitations. In these circumstances it might be necessary to amend the claims. Examiner interviews in these situations will be helpful to find out the Examiner’s understanding of the art, and have a discussion on possible amendments that will expedite prosecution, which may lead to a granted patent or limited number of RCEs necessary to get a granted patent. It may also be helpful to discuss possible clarifying/substantial amendments that could be used to overcome the art. When proposing clarifying amendments it is helpful to discuss with the Examiner proposed language just to make sure the patent attorney and the Examiner are on the same page on the clarification, and also so the Applicant can explain the clarifying amendment.

The second type of office action is an OK office action, where it appears that the examiner has done some sort of high level keyword search on the claims and matched it with the cited art. In these types of cases, Examiner interviews are beneficiary so that the patent attorney may explain to the examiner 1) what the embodiments of the invention are directed towards, 2) clarifying amendments that can be used to overcome the art. If an Examiner is able to understand the embodiments of the claimed invention over an Examiner interview, it is very likely that the next office action will be at least closer to the claimed invention instead of just a keyword search.

The third type of office action is a horrible office action, where it appears that the examiner has hastily completed an office action, by rejecting all the claims with one or two references and one or two figures of an application. In these cases either 1) the examiner did not understand the invention at all, and/or 2) needed to pump out an Office Action to meet their counts. During Examiner interviews of this kind, as a patent attorney you can tell the examiner 1) what the invention is directed towards to save him some time, 2) state why is office action is way off, and 3) tell him that if the next office action is this far off you have no problem appealing his reasoning in the office actions.

Accordingly, Examiner interviews can be used to discuss procedural or legal issues, technological issues, or possible amendments to the claims to expedite prosecution and save your clients money!

Setting up Examiner interviews can be relatively easy. On the most recent office action, on one of the final pages there is a number for associated with your Examiner. Call the examiner to set up a date and time to discuss the Office Action. Make sure to get the Examiner’s fax and/or email address to send an agenda. Generally interviews should be scheduled 1-4 weeks in advance. Once the interview is scheduled, the patent attorney should draft a short agenda that includes 1) the header information of the patent application, so the Examiner can quickly reference the patent application, 2) the specific portions (if any) of the claims that you wish to discuss, as well as possible a brief paragraph of why the cited art sections do not meet the claimed limitations, and 3) possible clarifying amendments that may overcome the art.

When conducting Examiner interviews, the patent attorney will call the examiner at the scheduled time. To start the examiner interview it is helpful for the patent attorney to provide a general overview of the claimed embodiments at a high level. Typically, examiners are very busy and the patent attorney will have a better understanding of the invention as a whole (seeing how they may have written it). The patent attorney may then discuss how the claims are different then the cited art, and allow the Examiner to provide his/her interpretation of the claims and the cited art. When discussing the cited art, it may be beneficial to distinguish the claimed language (or possible amendments) from the cited art, instead of just a high level discussion. Generally during the interview, the Examiner may 1) agree with your interpretation and say that the cited art doesn’t teach the claimed limitation, 2) agree with your interpretation but state the claims are too broad, and therefore you and the examiner can discuss possible clarifying amendments, 3) disagree with your interpretation requiring an additional and substantial limitation to be put into the claims, where once again the patent attorney and the examiner can discuss possible claim language. On many occasions, a simple clarifying one sentence amendment may be used to narrow and clarify the claims to overcome the art.

By | 2013-07-01T21:06:50+00:00 July 1st, 2013|Patent Basics|Comments Off on What are Examiner Interviews? How should I prepare and conduct one?