When prosecuting a patent application before the U.S. Patent and Trademark Office (USPTO), a patent examiner interview can be a powerful tool for advancing prosecution and clarifying outstanding issues. Conducted effectively, these conversations can save time, reduce costs, and ensure that you sufficiently address all of the examiner’s concerns.

The USPTO patent examiner interview tips below will help you get the most out of these crucial interviews.

1) Make Sure The Timing Is Right

First, consider whether the timing is right. Interviews are generally not permitted before a first office action unless it is a continuation application, or the examiner agrees that an interview would advance prosecution. At this stage, the examiner likely has not read the application or conducted a search. Most interviews occur after a non-final office action has been issued, when the application is top of mind with the examiner and there are specific issues to discuss. Interviews after a final rejection are also highly beneficial, though examiners have discretion to deny them particularly when you’re seeking to discuss new amendments which would require more than nominal reconsideration or a new search. 

Also, consider whether the issues are appropriate for an interview at the present stage of prosecution. Generally there is no downside to having an examiner interview. At a minimum, it’s an opportunity to get a better understanding of the examiner’s position and a feel for how likely they are to change their mind. However, there are situations, such as with complex or voluminous office action, where there may be a benefit to filing a written response first to focus the issues before an interview.

When requesting the interview, be sure to do so well in advance of your due date to respond to the office action since it can take a week or more to schedule. Notably, the USPTO’s automated interview request form requires that you propose interview dates at least 5 days out.

2) Prepare For The Interview

Second, thoroughly prepare for the interview. Carefully review the rejections and prior art cited by the examiner, and be prepared for any questions. Look beyond the specific passages cited by the examiner to make sure your arguments or amendments are not foreclosed by other disclosure in the cited prior art. Also, research the examiner’s statistics and recent cases in which they addressed similar issues. Especially when dealing with a patentable subject matter rejection, it can be helpful to see what types of arguments and amendments other applicants used to persuade the same examiner. 

3) Prepare & Provide An Agenda

Third, provide the examiner with sufficient detail of the issues to be discussed in advance. Most examiners will require an agenda. This could be a high level list of topics, but providing more detail on the points to be raised with citations to the record, and a listing of all proposed amendments, will allow the examiner the opportunity to thoroughly prepare and lead to a more productive discussion. Also, consider preparing visual aids to include with the agenda or to display if the interview is held by video conference.

4) Set Realistic Expectations

Fourth, set your expectations. Interviews are invaluable for understanding the examiner’s rejections and gauging their receptiveness to proposed arguments and amendments. However, more often than not, an examiner will stop short of agreeing that the claims are allowable during an interview. A supplemental search and consultation with the examiner’s supervisor may be necessary before allowance. When proposing new amendments, examiners will often request that they be filed in a written response for further consideration, along with a Request for Continued Examination if the interview is held after a final office action.

5) Maintain A Collaborative, Solution-Oriented Discussion

Finally, view the interview as a two-way discussion rather than an argument. Don’t just highlight disagreements or perceived errors in the examiner’s application of the law or prior art, provide potential solutions. Actively listen to the examiner’s comments, ask clarifying questions, and be receptive to their suggestions. The examiner may have an idea for amendment, or at least an aspect of the invention that the applicant should focus on to differentiate the prior art, if you ask. Collaborating and building a rapport with the examiner will also make future interactions smoother.

A well-executed patent examiner interview can be a turning point in the prosecution process. By preparing thoroughly, focusing on collaboration, and addressing concerns proactively, you can streamline prosecution and maximize your chances of securing strong patent protection.

Benjamin J. Lehberger

Any examples are solely for educational and illustrative purposes. They do not constitute legal advice and should not be construed as recommendations for specific actions. For personalized legal guidance, please consult a qualified attorney.

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.