Interview, Interview, Interview! Part 3: Conducting the Examiner Interview

Prosecuting a patent application may be viewed as a negotiation. The practitioner’s objective: to obtain the desired claim scope for your client; minimize amendments/arguments that might reduce the scope of literal claim coverage or even claim coverage under the doctrine of equivalents; and conclude prosecution in the shortest possible time. The examiner’s primary objective: to protect the public interest by issuing valid U.S. patents; the examiner is not thinking down the road about infringement issues. This creates opportunities for a negotiation, e.g., substituting language that provides a basis for ensnaring infringers but at the same time satisfies the examiner’s patentability concerns. Some examiners quickly understand that there is no reason for an applicant to obtain a patent that no one will infringe; the discussion then switches over to seeing if there is broader language that the examiner will deem to nonetheless satisfy the requirements of patentability.

At the end of the interview, summarize the points of agreement/disagreement with the examiner prior to the examiner completing the Interview Summary Form. The Interview Summary Form becomes part of the record and is sometimes the only record of what happened at the interview.

After the interview, various follow-up actions may be required. The sooner these are done, the more likely it is that the examiner’s concerns will be completely addressed.