Interview, Interview, Interview! Part 2: Interview to Expedite Prosecution

Examiners do not have much time to search and act on a single application. In addition, often the subject matter is highly complex. An interview can be an ideal teaching opportunity with charts, tables, pictures, and other means of disseminating and summarizing information. It can help show why the claims are allowable. Such presentations can prevent prosecution from bogging down completely. If a new examiner is assigned to your case, a summary presentation may be an ideal way to bring them up to speed with an efficiency that they will appreciate. 

Prepare, prepare, prepare

A key to a successful interview involves preparation. Initially, the practitioner must understand to the greatest extent possible, the claimed invention, the examiner’s rejections, and the prior art cited against the claims.

By fully understanding the claimed invention before the interview, moreover, the practitioner has the opportunity to consult meaningfully with the client before the interview. Positions the examiner might take can be discussed and decisions made about what can be negotiated and what cannot.

If there are limitations in the claims that need to be clarified, it is advisable to have a draft amendment available for the interview. If it has been decided in advance that there are some areas of negotiation, the practitioner might also carry along some fall-back draft amendments, to be produced if needed during the interview.

Credibility is all-important. In an interview, as well as during the rest of prosecution, the practitioner needs to be accurate in characterizing the claims and the prior art. The examiner should feel comfortable relying on the accuracy of everything asserted by the practitioner.