The USPTO lets you talk with your patent examiner directly. This article explains why it is usually a good idea to do so, and often a critical tool in moving your application to issuance.
What Are Patent Examiner Interviews and Why Should I Do Them?
A patent examiner interview is exactly what it says: An interview (over the phone, video conference, or in person) between a patent attorney and, if you’re doing it right, the inventor, and the patent examiner reviewing their application. The goal is officially to clarify issues, discuss potential objections, and move the application closer to issuance (or, in some cases, to understand why you should stop spending money prosecuting a patent that will never result in valuable, valid, issued claims).
The specialized writing (you’re writing the patent application to teach people having ordinary skill in the art — i.e. people with specialized training — how to practice the invention), terms of art, the level of complexity of the language in a patent application can leave the examiner unclear about some aspects of the invention. It is also common for the patent examiner to have an engaging conversation with the inventor that leaves the examiner with a solid understanding of not just the invention, but the excitement and innovative nature of the inventor.
To frame and understand the importance of examiner interviews, I’ll share my own experience. I had a patent application pending and after a couple of rejections, we set up an examiner interview. I was on the line as the inventor, with my patent lawyer, Sherrie, and the patent examiner. The examiner was borderline hostile, but at minimum clinical and disinterested in understanding the depths of the application. The examiner asked some question about ten minutes into the interview, and I responded with “Examiner Doe, let me explain what drove me to invent that part…” The examiner cut me off with “whoh, whoh, you’re the inventor? I thought you were one of the lawyers, I didn’t realize you were a person.” That, right there, is why you need to get on examiner interviews. Patent lawyers are part of the “patent machine” that operates at the USPTO. Patent examiners typically get into the field because they want to work in innovation, they want to help fuel the American economy with the highest energy source available (innovation), and they (often) want to eventually work as patent lawyers or agents. In other words, they’re interested in inventors.
So be interesting. Explain what is so cool about the invention. Let the examiner hear your natural exuberance about your innovation. Tell them why the invention matters. Most of the time, they listen, interact, and if you do it right, they will want to help you move your patent application forward. It is critical that you tell the examiner how important it is that the patent issues, but also how important it is that it issues with valid claims. You don’t want them to want to help you to the point where they overlook reasons not to issue the patent. To be fair, I don’t remember ever having an examiner just move my patent along because he or she liked me and was excited by the technology, but I have had an examiner start suggesting improvements to my technology. Of course, I had to shut that down.
You simply need to be clear about what you want: You want a valid, enforceable patent with claims that are defensible in court.
How Examiner Interviews Work
Interviews can be whatever you, your lawyer, and your examiner make them. I have a colleague who actually became friends with the examiner and would have hours-long “interviews” where they talked about everything under the sun. I wouldn’t recommend doing anything that can call the impartiality of the examiner into question. I use that example not to encourage you to become buddies with the examiner, but to illustrate that there is no single form of interview.
Interviews do have some things in common, though. First, it is normally requested by your patent lawyer — but sometimes the examiner initiates it. Second, going into the interview without reading and understanding the patent prosecution to date, such as the reasons for past rejections, isn’t forbidden. It also isn’t a great idea. Yes, you can still connect with the examiner, and you can still get them excited about your invention and give them an understanding about why it is an important step forward in the art. But you are also passing up the ability to explain, for example, that you “understand why you cited Smith as prior art, but Smith teaches the opposite of what we teach; Smith envisions a manufacturing process that must be done at or above ambient atmospheric pressure, while our process uses a near-vacuum”. Just do your homework before the interview. Knowing the examiner’s concerns and position also shows respect for the examiner.
Many interviews (there really is no “standard” or “normal” interview, so this isn’t universal) start with introductions and move quickly into a discussion about the office action at issue. The time between introductions and the office action discussion is a good place to explain who you are, why you invented the thing you’re trying to patent, and why the invention is important. If the interview goes well, the examiner should provide guidance to improve the chances of allowance. A record of the interview, written by the examiner, the patent lawyer, or one from each, is put into the “file wrapper” (the electronic record of everything filed in the patent examination)
And for heaven’s sake, be respectful. Patent examiners work in a heavy workload, pressured environment. They don’t want to be the patent examiner who issues a patent that is obvious, not novel, not patentable subject matter, and interferes with a significant part of the economy. They also don’t want to be the examiner who shuts down inventors and is regularly reversed on appeal. They’re working in a high consequence, high volume business and they deserve to be treated respectfully.
Final Thoughts
Nobody is going to understand the importance and functionality of your invention better than you do. Nobody can get as excited as you get over an invention. Bring your positive, excited energy with you to the interview. And remember, as the inventor, you’re the reason the examiner does what he or she does. This makes your attitude, your comments, and your explanations the center of gravity of the interview.