In an age in which so many communications are electronic, perhaps it’s not surprising that so few companies take advantage of the opportunity to expedite the allowance of their patents by conducting interviews with patent examiners in person at the U.S. Patent & Trademark Office.
Nonetheless, this is a tool that, when properly used, can have tremendous value for the patent applicant.
Certainly there are other options available for interaction with examiners, including telephone interviews or even videoconferences in some instances. Thus, in-person interviews are not always the answer, particularly given the cost of travel and time required for preparation.
However, despite the benefits that the other modes of connection can provide, sometimes there is simply no substitute for direct interpersonal interaction with an examiner to build rapport and improve the mutual understanding of the issues. Such a foundation can certainly help foster the examiner’s willingness to work with the applicant constructively toward allowance.
So, when is a patent application ripe for an in-person interview? There are several relevant considerations:
1. Written prosecution hasn’t been fruitful in advancing the case to allowance.
There are times when, for a host of possible reasons, there doesn’t seem to be a meeting of the minds between the applicant and the examiner. Perhaps the technology is complex and difficult to describe in writing. Perhaps the differences between the invention and prior art are nuanced. Perhaps there’s simply a need to be able to interact in real time while a thought or line of reasoning is fresh in the mind.
2. There are only a couple of main rejections/issues remaining.
Given the limited amount of time allocated for an interview (generally about 30 to 45 minutes for substance), it’s difficult to discuss an extensive list of issues. Cases best suited for interview will have only one or two significant issues (rejections, prior art references, etc.) to be addressed.
3. The technology lends itself to demonstration.
Patent examiners spend all day immersed in complicated written documents on complex and nuanced subject matter. Conducting a technology “show-and-tell” gives the applicant the chance to bring the invention to life, making the case for patentability more compelling. Examiners generally find demonstrations of the invention to be helpful in honing claims that patentably distinguish the invention from the prior art.
4. There are multiple applications on related technology.
Related technologies have a significant chance of being assigned to the same examining group and to the same examiner, although this is by no means guaranteed. Accordingly, the time spent educating an examiner about the technology and differentiation over the prior art can produce benefits not only in the case being interviewed but also in other applications on related technology. There are limited opportunities for broader education of examiners on cutting-edge technologies unrelated to a particular patent application that can also be quite valuable, but those opportunities are beyond the scope of this article.
There are, of course, optimal times to schedule an in-person interview, and PTO rules and initiatives encourage or discourage interviews at different phases of prosecution.
In most instances, however, examiners are amenable to at least one interview in an application, provided the request is courteously made and consistent with PTO protocols.
It can be particularly beneficial if several applications related to the same or similar technology are ripe for interview at the same time; examiners are usually accommodating if they understand an applicant is scheduling several in-person interviews on the same day. This allows the preparation time and cost of travel to be shared across multiple applications and reduces the inconvenience and cost related to multiple trips to the PTO.
Generally, the attorney should set the tone and act as the meeting moderator.
The required participants for any interview are the attorney of record and the patent examiner. While there are advantages to in-person interviews even if the only attendee is the attorney, generally the maximum affect is achieved by including one or two additional participants — most often an inventor and either a representative of the assignee or the licensee, if there is one.
The inventor brings a level of credibility and expertise in the relevant field and provides the examiner with the opportunity to obtain clarification (about the invention, the prior art, etc.) directly from the source. This is particularly helpful when the inventor is preeminent in his field.
Moreover, the enthusiasm that the inventor has for his own invention is often difficult to duplicate, and he is best suited to conduct any planned technology demonstrations.
The inventor’s presence and explanation of the technology often has considerable persuasive power in and of itself, provided that the inventor is well-prepared. In circumstances in which there are multiple inventors, it’s generally best to enlist only one to avoid muddying the waters with different views and perspectives.
The representative of the assignee or licensee may or may not participate significantly, depending on the circumstances. If a representative of the assignee or licensee is present, it may be helpful for him to explain why the application is significant to the company.
If the representative is knowledgeable about the technology, he may contribute to the substantive discussion as well. The goal is to help the examiner understand the context for, and the importance of, the technology and to enlist him in working with the applicant to identify patentable subject matter.
The last optional participant is the examiner’s supervisor. Depending on the seniority and independence of the examiner, the supervisor may be a necessary player.
Even in circumstances in which the examiner has the authority to conduct the interview on his own, the applicant can request that the supervisor be present. This may be useful if a different perspective would be helpful; for example, if the examiner seems stuck on a point that the applicant believes is without merit.
Inclusion of the supervisor is also a hedge against examiner turnover. In the unfortunate circumstance in which the applicant makes progress or reaches agreement with the examiner, only to find he has been replaced with a new examiner before the application is allowed, the supervisor can serve as a point of continuity if he was part of the interview.
Preparation of all attendees is critical for a successful interview outcome. Each participant should understand the context to be established and his role in the presentation.
Generally, the attorney should set the tone and act as the meeting moderator, inviting participation from the other members of the team as planned and engaging the examiner at the appropriate times.
Typically, if there is a “show-and-tell” to be conducted, it’s most effective if it occurs at the beginning of the interview, bringing the technology to life before reverting to the dry claim language and prior art documents.
The agenda should include the points of rejection and any prior art to be discussed, as well as the facts and arguments to be relied on in rebutting the rejection(s).
It’s also helpful to consider acceptable fall-back positions and/or claim amendments in advance, as part of the give-and-take of the discussion. Small concessions can be invaluable, particularly if the examiner will agree to an allowance on the spot as a result.
Technically, any allowance may not be truly “on the spot,” as often either an amendment must be filed by the examiner or the applicant or arguments must be reduced to writing. However, obtaining an affirmative concrete agreement with the examiner is the desired goal.
If it appears that agreement can’t be reached during the interview, it’s helpful to understand the facts and circumstances under which the examiner might be persuaded (e.g., a subsequent filing of an expert declaration).
As with all interviews, the examiner will issue a summary of the discussion. Some examiners will draft the text of the summary at the conclusion of the interview and may permit the attorney to review and comment on the language before finalizing it.
If the language of the interview summary is not ideal from the applicant’s view, the applicant has the opportunity to file a separate summary document. Both documents form a part of the public record of the patent application.
It’s important to act quickly to capitalize on momentum gained during the interview. Generally, it’s best to follow up with any agreed upon items shortly thereafter.
For example, if tentative agreement was reached on allowable subject matter or claim amendments, it’s important to act before the examiner’s memory of the discussion and consensus reached wanes (or he leaves the PTO!). Allowing too much time to pass between a productive discussion and follow-up action can obviate the progress made during the interview.
The PTO provides additional helpful tips in the “Interview Best Practices” document, which is available at https://www.uspto.gov/sites/default/files/patents/law/exam/interview_best_practices.pdf.
While in-person interviews aren’t a panacea, when properly conducted they are more often than not one of the best opportunities available to a patent applicant to reach agreement with the examiner and make progress toward grant of a patent on the invention.
Lisa M. Warren, a registered patent attorney, is chair of the patent practice group and managing partner of Morse, Barnes-Brown, Pendleton, which has offices in Boston, Cambridge and Waltham, Massachusetts.