Examiner Interviews

Examiner interviews are a great tool for use in patent prosecution. Like any tool, you have to know when and how to use it. Thus, it is important not to think that every problem can be solved with an interview (if all you have is a hammer, then every problem looks like a nail).

Sometimes the preparation for an interview is just as important as the interview itself. One approach that can be helpful with examiner interviews is thinking about “pre-interview” interviews. This is the time when you talk with an examiner about the idea of setting up an interview. Often, this discussion can give you some key clues about what type of preparation will be the most helpful for the actual formal interview. For example, you might discuss whether the examiner wants or needs a supervisor or another examiner on the call, or whether the examiner would like detailed claim amendments before the interview, or whether the examiner thinks hearing from the inventor or in-house counsel would be helpful.

Next, once you have some of the detailed information worked out, preparing the agenda itself can include tactical decisions. Sometimes a minimal agenda, or no agenda at all, might actually be best if the examiner seems to have a specific direction in mind. When the examiner is asking for detailed amendments ahead of the actual interview, it can often be helpful to give the examiner some options for the amendments. For example, one approach is to provide three different choices of amendments for the main claim. The options do not have to be (and preferably are not) just three versions of the same amendment of varying scope (as examiners will naturally always be drawn to the narrowest choice). Instead, offering different approaches and wording will often enable the examiner to give an idea of what direction they think is best. This also helps give the examiner some ownership of the choice if the applicant determines to follow that feedback.

During the actual interview, it can be beneficial to include some open-ended questions. If the interview is just about an attorney telling the examiner that the rejection is wrong, the interview probably will not be too helpful. But trying to learn where the examiner is coming from can be prove critical to success.

Of course, all of this assumes the examiner is genuinely trying to do their job correctly. In most cases this is a safe assumption, but be wary of examiners intent on rejecting - you may think the interview went great only to find you made no progress (or that you actually lost ground) on the next action.