Patent examiner interviews can help you explain your invention, overcome misconceptions, and explore claim amendments needed for allowance. Although statistically, interviews usually help, there are a few examiners that don’t like them!
How does the USPTO examine patents?
The USPTO only gives examiners a few hours to study a given application, and the examiner’s job is to find reasons to reject them. The idea is to protect the public by preventing overbroad or bogus patent applications from issuing.
Even the best patent applications are hard to read. Wouldn’t it be great if you could briefly explain the key points in any given application, answer questions, and clear up misconceptions? Fortunately, the USPTO allows you to do this, so long as you follow the rules.
In this discussion, the term “interview” will generally imply a “telephone or video interview.” You can also request in-person and video, but the telephone is most common.
Patent examiners are human. They have supervisors and work in an organization following written rules. To help you negotiate, let’s consider how the USPTO operates, and what rules the examiners have to follow.
What happens when your patent application arrives, how does the USPTO process it, and how does the examination process work?
The USPTO gets about half a million patent applications a year. They have about 8,000 patent examiners — college graduates with science or engineering degrees. Some are new, and some are very experienced. The USPTO will assign each examiner to an “art unit” with about ten other examiners, depending on the examiner’s background.
Patent examiners are held to a quota system
The USPTO follows a rough quota system. About 50% of patent applications are approved, and about 50% are not. This varies between art units, and some are harder than others. You can get an idea of the statistics for your particular examiner and art unit through various other websites.
What happens when your patent application arrives? In pre-examination, the USPTO quickly pre-reviews a patent application and directs it to a particular art unit. The art unit assigns the patent to an individual examiner. That examiner has a docket of about a hundred patents. On average, they must process 2-3 patents a week to be considered productive.
The USPTO gives examiners a time budget of about 14-30 hours for two office actions. This is: examine, issue a first rejection, consider the response, and then in the second office action either allow the patent or issue a second and “final” rejection. So they constantly aware of the amount of time spent per patent.
(What happens if more than two responses are needed? You can purchase additional office actions by paying for an RCE, and the USPTO will give the examiner extra time.)
Why and how to schedule an interview
Realize that almost all first office actions are rejections. So it makes a big difference how you handle the first response. If you are trustworthy and explain things simply and clearly, they are more likely to listen to you.
Patent examiner interviews are not always needed or valuable. Sometimes the rejection is simple to correct, and further discussion is not required. Other good reasons to avoid interviews are when you are out of time or when the examiner has a track record of responding unfavorably to discussions. Otherwise, interviews are often helpful.
Although it is possible to request pre-examination interviews, these are usually less useful. The examiner hasn’t spent much time reading your patent yet. They will hear your arguments “cold” and thus may have a harder time understanding you.
The best times to talk
I think it usually is a good idea to request a telephone interview before responding to any substantial rejection. Excellent times are after the first rejection, and before responding to a “second” or “final” rejection.
At this point, the examiner has spent some time studying your patent. They have also told you what they think needs to be corrected. Remember that they are expecting you to dispute their rejection. Think of this as a tennis game. You lobbed the ball over the net, and they returned it. Possibly their return was fast or slow, had spin or not, or was in or out of bounds! But now the ball is in your court again.
Consider a response to a first rejection. The examiner has probably expended about 70% of their total time budget on your patent. They have may have formed opinions but must listen to reasonable rebuttal arguments. They only have a few work hours to either allow your patent application or to write another rejection explaining why they found your ideas and claim amendments unpersuasive. The patent office gives them equal credit either way, but expects them to generally meet their overall quota of acceptances and rejections for that quarter.
Although techniques differ between patent attorneys, I prefer to start by writing a complete draft response, including rebuttal arguments and claim amendments. Point out nicely where the examiner may have misunderstood your invention and the citation. When the examiner does have a good point, consider agreeing and amending your claims accordingly.
Scheduling your patent examiner interview
Then schedule the interview. You can call the examiner directly, but I use the USPTO AIR system. This internet form requires you to ask for an interview about a week in advance, propose several alternate times, and briefly review the topic for discussion. If you have a draft response to review, mention this in your summary. The examiner will usually respond by email. I usually write back to confirm. A few days before the interview, I email them a copy of the draft response, a completed USPTO PTOL-413A interview form, and an MPEP 502.03 internet communications authorization.
Most examiners will at least skim your draft response before the interview, which helps streamline the discussion. For example, you can often start by briefly discussing the high points of your invention and critical reasons why it differs from the prior art. If you have made already made some claim amendments, consider trying for some goodwill by admitting them early.
The examiner will usually focus on areas where they don’t agree with your arguments or think your claim amendments are inadequate. Sometimes the examiner will bring up new issues. Although new problems are never welcome, think of these as a way to streamline prosecution. If you can refute the latest topics on the spot, consider doing so, but otherwise, acknowledge them and mention that you will address them in your official response. Remember that examiners view claim amendments as a type of proof that they are doing their job. Although you may not want to make big claim amendments, consider the tradeoffs between getting an allowance and invention scope and make intelligent decisions here.
Finishing the interview and filing your official response
Not every patent examiner interview goes well. It can be annoying when the examiner has not read your draft response in advance, but take it as a chance to give good PR for your invention. Some examiners are too junior to give much feedback, while others don’t like to budge from their earlier positions. However, most examiners are intelligent and reasonable.
Don’t expect the examiner to actually tell you that all problems are solved. They must reserve the right to raise further issues if they see any after reading your official response, or if their supervisor raises further questions.
Often, the sign of a good interview is when the examiner has already read your draft response, and agrees, or only raises a few minor points. You can then have a “short but sweet” interview and sign off with everyone in a good mood.
In the official response, I usually mention the interview date and participants, and I thank the examiner for their helpful comments and suggestions. The examiner, in turn, will document the interview in a few sentences in an official interview summary.
About the illustration: DALL-E-2 AI Picasso-style computer drawing of a telephone interview.