Examining the Examiner Interview

Compact or streamlined prosecution is in vogue in prosecution circles these days.  While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or streamline prosecution, benefiting both clients and the USPTO. Some of the advantages that are driving their popularity include the fact that examiner interviews can reduce prosecution costs, minimize arguments of record, and decrease prosecution time. 

A review of USPTO statistics reveals that examiner time spent conducting interviews has increased considerably. In 2008, there were almost 80,000 examiner hours spent on interviews, but by the end of fiscal year 2016 that number jumped up to over 220,000 hours. Among the factors that contribute to that jump include, the Office itself.

The Office makes it easier than ever to not only schedule an interview but to conduct one. For example, with the Automated Interview Request (AIR), scheduling an interview requires only filling out a simple web-based form. This form also enables applicants to authorize communication via the internet without having to file a separate communication. The USPTO indicates that since AIR inception in September 2015, nearly 6,000 interview requests have been generated using AIR.  Historically, applicants/attorneys called the examiner to schedule an interview and many attorneys continue that practice today. The AIR form, however, has the added benefit of being entered on the record.  This is particularly useful in instances where the examiner fails to return your phone call, serving both as a reminder of when you called and when to follow-up. Additionally, the AIR form starts a timer on the examiner’s docket to respond to the Request that can be monitored by the examiner’s supervisor. Of note, if using AIR, the requested interview date and time must be greater than one week after submission of the form. The proposed date, however, serves merely as a suggestion; it may be possible to schedule an earlier interview depending on availability of the parties.

Conducting examiner interviews has also become more convenient.  In particular, attorneys or applicants outside the Washington, D.C. metro area no longer have to schedule back-to-back interviews when they make their annual pilgrimage to D.C. for an interview week.  Today, an interview may be conducted not only in-person but also via phone or WebEx. While examiner tend to prefer telephone interviews, there remains merit to conducting an in-person interview, such as allowing the parties to physically sift through the cited art, the office action, and the application. But the next best option may be to use one of the USPTO’s designated public interview rooms available at each of the USPTO campuses. These rooms allow applicants and/or attorneys to collaborate with the examiner working remotely or at a different campus. The advantages and new-found popularity of examiner interviews represents a “win win” for the applicant and the Office. To facilitate the practice, the Office has developed a number of reference documents for conducting interviews, e.g., Interview Practice Guidelines for Applicants, Effective Interview Practice, Interview Best Practices, and FAQs on Interview Practice.

The examiner interview continues to be a tool for achieving compact prosecution and now, with the aid of technology, is easily scheduled and conducted.