If conducted properly, an examiner interview can be one of the most effectual means for furthering patent prosecution if there is an item in dispute which negates the patentability of a patent application. For example, if the Applicant disagrees with a rejection/objection contained within an outstanding Non-Final Office Action, it is advisable to request an Examiner Interview (which will likely be granted by the Examiner).

Hence, by conducting an Examiner Interview, not only is the Applicant able to point out why the cited art does not teach the various recitations of the claims, but it also provides the Examiner with an opportunity to gain a further understanding of the Application.

In view of the above, it is submitted that such a result is a win-win for both the Applicant and the Examiner. The result is a win for the Applicant as it is likely that the Examiner will withdraw the rejections/objections that are present in the outstanding Office Action. Furthermore, it is a win for the Examiner as they will many times step away from the Interview with a better understanding of the Application and will therefore be able to conduct a more focused/proper prior art search. Additionally, if the Examiner is able to better understand the subject application, they will likely be able to conduct the search with less difficulty.

The role of a properly conducted prior art search by the Examiner is extremely beneficial for an Applicant. Although U.S. Patent Law does not require an Applicant to conduct a prior art search (however it does impose a duty upon the Applicant and their representative(s) to identify any known information “material to patentability”), if the Applicant forgoes an initial prior art search before drafting a patent application (which is not advised), a well-conducted prior art search by the Examiner may provide the Application with an additional layer of protection. Accordingly, if Office Actions contain rejections that are at least reasonable, they will in effect strengthen the Application.

Furthermore, it should be noted that the MPEP indicates that an interview cannot be employed to “sound out” the examiner MPEP 713.03. Instead, the Interview should only be used if it “could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.” MPEP 713.01

An Interview does not remove the necessity for replying to an Office Action as specified in Section 1.134. Furthermore, although Examiner Interviews are normally not granted before a First Office Action (except for continuing or substitute applications), it must be additionally noted that the Applicant does not have an absolute right for an interview after a Final Rejection (but the examiner may grant the interview if they so choose). My personal experience regarding requests for conducting an Examiner Interview if the outstanding Office Action is Final have been mixed. Although I have not kept an accurate accounting, I believe Examiners are more likely to NOT grant a request for an Interview if the outstanding Office Action is Final.

However, after the First Office Action, an Examiner Interview is allowed as a matter of right. Further, an Interview is normally not granted after an appeal brief is filed or after an Application has been passed to issue. MPEP 713.05 Additionally, the Interview should be arranged for in advance.

Of the “recognized” methods of communication, In-Person Examiner Interviews can be quite effective for furthering prosecution. A trip to the PTO may be worthwhile because the examiner may have an opportunity to see the invention physically (if one is available) and physical interaction builds rapport. However, the Applicant will incur additional costs related to Practitioner travel, etc. (even if the practitioner is located in Washington, D.C.). The prior point cannot be stressed enough especially in todays tough economy.

However, in contrast to In-Person Examiner Interviews, I have found that telephonic interviews can be an equally effective means to accomplish an Applicant’s goals. Further, a number of Examiners have stated to me that they actually prefer a telephonic interview if it is coupled with a concise “agenda.” Additionally, such an “agenda” is actually required by the MPEP. Specifically, MPEP 713.01 states that, “When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.”

In the PTOL-413A (or the agenda), I normally include a description of: the rejection, the claim number and a portion of the claim recitation that I want to discuss. In this way, by pointing out to the Examiner which issues I want to discuss with detailed particularity, the Examiner can review the specific claim recitation I indicated, and further, can review the art which was correlated as allegedly teaching the indicated claim recitation. By providing such information in advance, a more constructive conversation can be maintained.

Finally, I cannot stress enough the importance of treating the Examiner the way you yourself would want to be treated. As human beings, we constantly disagree on a number of matters on a daily basis. However, many times it is the case that both parties to a disagreement essentially agree, but either one or both of the parties are not listening. By failing to listen to the other, one may not realize that a mutual understanding does indeed exist between both parties. For example, sometimes a single word can have conflicting meanings to both the Applicant and Examiner, and therefore create a contention. Other times, there is a misunderstanding regarding the function that a certain item in the cited art performs. Listen carefully, and you will likely obtain a desired result.

Further details regarding Examiner Interviews may be found in at least @ MPEP 713.01.


Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.