Welcome to Innovation Café, where we explore practical tips for inventors navigating the complex world of intellectual property. Today, we’re diving into a crucial but often underutilized tool in the patent process: patent examiner interviews.
What Are Patent Examiner Interviews?
A patent examiner interview is a meeting—typically over the phone, but also via 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 to clarify issues, discuss potential objections, and move closer to a granted patent. It is not unusual for the highly specialized and often expansive language in a patent application to 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.
Why Examiner Interviews Matter
Patent prosecution involves back-and-forth written communications between the examiner and your patent attorney or patent agent. While you can get to an allowed patent using only written documents, these are asynchronous communications and not easily amenable to the kind of give and take that can occur through a person-to-person discussion. An examiner interview offers a unique opportunity to:
- Humanize the Process: Examiners often see endless applications as impersonal stacks of paperwork. Speaking directly with the inventor adds a human element, fostering engagement and understanding.
- Resolve Misunderstandings: Complex inventions can be misunderstood. Explaining your ideas verbally ensures the examiner fully grasps the nuances.
- Expedite the Process: Interviews can streamline the process by addressing concerns in real-time, avoiding lengthy cycles of rejections and responses.
How Examiner Interviews Work
- Scheduling the Interview
- Your attorney may request an interview after receiving an office action. In some cases, the examiner may suggest one themselves.
- Preparation Is Key
- Review the office action thoroughly. Understand the examiner’s objections and prepare concise explanations for why your invention meets patentability requirements. More importantly, be ready to tell the story of how you came up with your invention. While the history of your conceptualization of the invention isn’t likely to play into any patentability decisions, it is an important part of the whole story, and allows the examiner to understand your invention in context.
- What to Expect
- Introductions: The examiner, your attorney, and you will introduce yourselves.
- Discussion: Address specific issues raised in the office action.
- Guidance: The examiner may suggest ways to amend claims or focus on particular aspects to improve your chances of allowance.
The Inventor’s Role in Interviews
While your attorney leads the legal aspects, your presence as the inventor can make a significant difference. Here’s why:
- Show Your Passion: Your enthusiasm for your invention can engage the examiner and demonstrate its importance.
- Provide Technical Insight: As the inventor, you’re uniquely equipped to explain the practicalities and innovations of your creation.
- Build Rapport: Connecting personally with the examiner can lead to a more collaborative and constructive process.
Tips for a Successful Interview
- Be Prepared
- Know your invention inside and out. Be ready to explain how it works, what problem it solves, and why it’s unique.
- Stay Professional
- Approach the interview with respect and professionalism. Avoid arguing or becoming defensive. You should also be prepared
- Engage the Examiner
- Share your story: How did you come up with the invention? What challenges did you overcome? Personal anecdotes can make your case more compelling.
- Follow Up
- After the interview, ensure your attorney incorporates the feedback into any amendments or responses to the office action.
A Personal Perspective
In my experience, examiner interviews have been game-changers. On one occasion, simply introducing myself as the inventor shifted the examiner’s perspective—they were more engaged and eager to understand the invention. That connection can make all the difference in getting your patent approved.
Final Thoughts
Patent examiner interviews are a powerful tool for inventors. They’re an opportunity to advocate for your innovation, clarify misunderstandings, and build rapport with the examiner. Don’t let the chance to directly influence the patent process slip by—embrace it. Don’t be afraid to ask your patent lawyer to set up an interview. Good patent lawyers know the value they have.
Gary Shuster
Innovation Café