Interview, Interview, Interview! Part 1: When to Interview a Case?

Examiner interviews are a highly useful tool for not only helping the examiner to understand the invention described in the application, but also for helping the practitioner understand the examiner’s concerns about patentability.

When to interview a case? 

If many of your cases are assigned to a new examiner or one you don’t know, it can be very helpful to pick one or more cases that involve representative patentability issues and schedule an interview with that examiner. By doing so, one can learn which positions of the examiner are “hard” and which are “soft.” This can greatly reduce the cost of subsequent written responses since the focus can then be put on those issues most meaningful to that examiner.

Further, via an interview, you can learn what the examiner absolutely refuses to budge on or if they have unmovable positions on certain language. You are then in a position to advise the client that unless concessions are made, an appeal will be necessary.^[1] Since appeals can be timely and costly, the client can then determine if there is business justification for appealing the particular case; otherwise, of course, concessions may be in order. Knowledge gained from interviews is not limited in usefulness to the specific case interviewed. In addition, such knowledge can help in the drafting of claims in future cases. By avoiding language that would likely elicit a rejection from the examiner, even if that rejection is erroneous, you avoid later claim amendments and accompanying arguments and unnecessary expense.

An interview is also an opportunity to create good will with an examiner. This facilitates prosecution not only in the case interviewed but in future cases. The importance of good will cannot be overstated: many decisions made by the examiner involve discretion. You want the examiner to exercise that discretion in a state of mind that is sympathetic, rather than hostile, to you and your client.

^[1] An appeal of an examiner’s rejection goes to the Patent Trial and Appeal Board.