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The Importance of Patent Examiner Interviews

Josh Conley \ August 02, 2019

What is a USPTO examiner interview?
A USPTO examiner interview is a useful tool during patent prosecution to clarify positions, resolve issues and provide a better understanding of the patent application. When done correctly, it can expedite patent prosecution and reduce costs.
The interview can occur before the examiner has issued an office action, but it is more commonly conducted after an examiner rejects the application. A rejection means the examiner has either found errors (which can be as simple as a typo) or he/she doesn’t view the invention as new, useful and nonobvious. 

These talks are usually over the phone but it can take place in person. It must only be between an examiner and an inventor/attorney and the conversation is limited to under an hour. You should request a call at least a month before your response is due. You are also advised to submit an agenda in advance that outlines the topics you wish to discuss over the phone.

 

Why seek help?
It is recommended to get help from a patent attorney who has deep experience conducting these interviews. They understand how to interrupt a rejection, prepare arguments and gauge the reaction of the examiner over the phone.

The objective for both parties is to develop a strong patent. The attorney is attempting to get the broadest protection possible for their client’s invention and the examiner is trying to allow the narrowest protections.

The interview can also clarify concepts in response to any questions or areas of confusion. Additional evidence can be submitted through a declaration.

There are thousands of USPTO examiners across the country. The department processes thousands of patents each year. It’s understandable the examiner isn’t always going to be familiar with the patent you want to discuss.

That’s why having an IP attorney who knows how to navigate the conversation effectively and has a strong relationship with examiners can make a big difference.

Responding accordingly to the terms agreed upon during the interview will allow you to potentially reduce costs during the application process by eliminating a subsequent office action rejection.

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