How to Conduct a Patent Examiner Interview. Episode 66

Understanding Patent Examiner Interviews

In this episode, I’m going to talk about patent examiner interviews. You might be thinking that the examiner is your enemy, and sometimes it can feel like that if they keep rejecting your application. In some cases, maybe they do have some gripe against you, but believe me, they probably have so many patent applications on their desk that they don’t have time to think of you as an enemy or have any personal vendetta against you. I’m sure it does happen, but that’s really not the norm.

In theory, you should be able to work with your examiner to find some common ground on what might be patentable about your invention. Sometimes it’s hard to do that with just a written response because there’s no live give-and-take or opportunity to answer questions on the spot. In the examiner’s response, they’re not going to tell you ideas about how you might be able to get an allowance; they’ll only tell you why the claims as they’re written are patentable or not patentable.

The Statistics on Examiner Interviews

If you look at the stats, applications where the patent attorney has conducted an interview with the examiner have a higher allowance rate than applications where there has been no interview. The latest stats that I’ve seen indicate that the overall allowance rate for a patent application without an interview is about 64%, and the overall allowance rate with an interview is about 80%. Not all examiners are equal as well. For some examiners, the interview might not have any effect, and for others, it might have a really high effect, but overall, they’re a good thing.

It doesn’t cost anything to the patent office to do an interview, but if you’re having an attorney do it, it will cost you attorney time to prepare and conduct the interview. So, you do have to ask yourself whether getting a bump in the chance of allowance is worth another few thousand dollars or whatever your attorney charges.

When Can You Request an Interview?

First, you usually have to wait until your first office action. You can’t just file an application and request an interview at the same time. There has to be some kind of rejection. There is a pilot program where you can request an interview before you get a rejection, but if you’re not doing the pilot program, the general rule is you have to wait for a rejection.

How to Request an Interview

There are a few ways to do it, but I think the best way is to first call the examiner—probably at least a month before the response is due. You have to find a day that works for both you and the examiner, and oftentimes, the examiner’s supervisor has to be in the interview as well.

There’s also a form called the Automated Interview Request Form, which has some boxes to check off. You might want to complete another form authorizing the patent office to communicate with you via email instead of going through the patent filing system. This form is Form SB0439.

On the form, you enter your name, application number, and some other information about the patent, as well as your phone number and email. You also propose a few dates and times that work.

Since none of the dates and times you propose on this form may work, that’s why it’s good to call. But sometimes you’re playing phone tag with the examiner and just can’t talk to them, so this automatic request form is helpful if that happens.

There’s a short video the patent office puts out, so if you search online for "Schedule an Interview with a Patent Examiner Video," it should pop up. Then, within two days, you should get an answer about when your interview is scheduled.

Preparing for the Interview

There’s also another form called PTOL-413A, which is the Applicant Initiated Interview Request Form. You fill out some information about the application, who will participate in the interview, the proposed date and time, whether you want the interview to be over the phone, in person (which requires traveling to D.C.), or via video conference, and whether you’re going to be demonstrating any exhibits. It also asks what issues you have with the rejection or objection, the claims, and the prior art. This form is more detailed about what the interview will cover, rather than just scheduling a date.

If you’re thinking about amending claims, you probably want to write up some proposed changes and send them to the examiner a few days before the interview so they can review them. If you believe the examiner misinterpreted something in your claims or the prior art, that’s something you’ll want to highlight in the interview.

If you think you’re just going to argue for patentability and not make amendments, you might not want to include proposed amendments. If you do, the examiner may be less likely to allow your claims as written and instead pressure you into amending them. There are different strategic approaches to interviews.

Conducting the Interview

During the interview, ask whether the examiner has any questions. It might be helpful to summarize the prior art, explain the invention, highlight the differences, and clarify where you agree or disagree with the examiner. Ask whether any limitations appear novel or if additional amendments might be necessary. If the examiner thinks a claim is too broad, try to pin them down on what specifically is too broad based on the prior art.

Before the interview ends, try to confirm any agreements you’ve reached. The examiner is unlikely to give you a definitive answer on whether they’ll allow the claims, especially if amendments were made. They may need to conduct a prior art search to verify patentability.

After the Interview

After the interview, two things happen. First, you must write an applicant interview summary and submit it to the USPTO. If you’re responding to an office action, you can include the interview summary with your response. There’s no required format, but you should accurately summarize the interview, including the date, names of participants, whether an agreement was reached, any potentially allowable subject matter, and whether the examiner agreed to contact you after the interview.

The examiner will also write up an interview summary. You’ll want to review it to ensure it’s accurate, and you can request a correction if necessary.

Best Practices for Interviews

The best time to conduct an interview is after the first office action, not the final office action. There’s no requirement for an examiner to allow an interview after a final office action. If you’ve already filed an appeal brief, interviews are generally not allowed. Also, there’s usually only one interview per case, so if you didn’t think something went well, you likely won’t get another interview without filing a request for continued examination.

If you want to know all the details about interview rules, you can search under the Manual of Patent Examining Procedure, Section 713.

I’m Adam Diament, and until next time, keep on inventing.