At CRK, we love interviewing cases with patent examiners. It is perhaps the best tool in a patent attorney’s kit for prosecuting strategic patent applications. With interviews, you can resolve issues, get agreement, and ultimately reduce the number of replies to achieve the appropriate claim scope. A couple years ago we crunched the numbers showing that early interviews reduce, with statistical significance, the number of office actions in prosecution. Better results with less expense and in less time—who wouldn’t want that?
So, we interview early and often. We train on effective interviewing. And the three steps in this article offer an approach to having better interviews.
When the examiner believes in the broader context and significance of the invention, the thinking shifts from “why this isn’t inventive” to “what do we have to do with the claims.”
Step 1. Know your case…cold. This goes without saying, but I’ll say it anyway because it’s important. Being prepared for the interview means having a command of the invention, knowing what’s in the disclosure, knowing what’s in the prior art, having acceptable amendments (ideally more than one option) pre-approved by the client in your back pocket, having your argument concise and practiced, and anticipating what counter arguments you may encounter. You can be a much better advocate for your client when you’re more prepared for the interview than the examiner is, because preparation allows you to drive the discussion and to respond immediately and effectively.
Step 2. Tell the invention story. Story telling can be exceptionally persuasive. And new technology is exciting. So bring the invention to life, and you can often make the examiner an ally in expressing the allowable subject matter. This happens because when the examiner believes in the broader context and significance of the invention, the thinking shifts from “why this isn’t inventive” to “what do we have to do with the claims.” And at that point, it’s just a matter of negotiating language everyone can agree on.
Step 3. Ask questions to get the heart of the issue. We’ve all read too many prosecution histories that play like whack-a-mole. For every amendment the applicant makes, the examiner fires back with a new reference or argument. Back and forth, RCE after RCE, arguing past each other and generating a lot of prosecution history (not to mention pendency and cost) in the process.
Why is prosecution not advancing? Because for all of the amendments and rejections, there is some underlying issue that’s not being addressed or resolved. So use the interview to ask questions. And then really listen to the answers. They’ll reveal what the real sticking point is.
Maybe the examiner just “feels” the invention is obvious despite what the art shows. Maybe the applicant doesn’t appreciate the examiner’s interpretation of the claims. Maybe there’s a misunderstanding about what the art teaches. These issues may be apparent from the written office action, but often there are nuances that don’t come across on paper. The interview allows you to discover those issues early and to address them head on.
Because at the end of the day, patent prosecution is about reaching a common understanding with another person about something in writing that, by its very nature, has never been expressed in writing before (the invention!). And what better way to establish a common understanding than to have an informed, engaging, and thoughtful conversation with that person. Happy interviewing!
Bonus step: Do your homework. It’s human nature for folks to bring their life experiences to their decision making, and patent examiners are no different. Today’s tools (sites like Patent Advisor from ReedTech, Patentbots, or Bigpatentdata, for example) allow quick and easy access to an examiner’s entire output at the PTO.
Look at the dates to get a sense of the examiner’s experience. Has she always been in this art unit or does she have expertise from other technologies that might influence her thinking? Who are the most frequent assignees of the cases she examines, and what would that do for her impression of the state of the art? If you have the time or perhaps in a particularly tricky case, read a few file wrappers of the examiner’s recently allowed cases. Or search her file histories for issues similar to your case. All of this info will help you understand the examiner on a more personal level, giving you a better sense of how to approach the interview, frame the issues, and get to that common understanding.