The USPTO utilizes examiner interviews with patent applicants to assist in discussing and solving issues in patent applications. These interviews are typically critical to improve a mutual understanding of the invention claimed. Patent examiners are generally happy to conduct interviews in order to provide assistance and expedite the application process. They are encouraged by the USPTO to reach out to applicants stuck in the application process or confused by it. So when an opportunity arises, examiners are eager to hear applicants out.
This article addresses what an examiner interview is and the purpose of having examiner interviews. We then discuss when to request an interview, how to draft questions for an examiner interview, how to schedule, and how to conduct the examiner interview.
What is a Patent Examiner Interview?
An examiner interview is a meeting with the patent examiner to discuss your invention’s patent application. Interviews with the patent examiner can be conducted before, during, or after examination of the patent application on the merits. The interview can be conducted in person, by phone, or via video conferencing. An examiner interview is a chance to discuss and clarify what the invention is and whether it is patentable.
Examiner interviews cannot be used as a fishing mission. In other words, you cannot request an interview with the purpose of merely asking the examiner what is patentable. Interviews for the purpose of “sounding out” the examiner are not permitted.
What is the Purpose of a Patent Examiner Interview?
The purpose of an examiner interview is to advance the prosecution of a patent application to a condition of allowance (and issue) or final rejection. It is a chance to speak directly with the patent examiner reviewing your patent application to address any issued raised by the examiner in an office action or to explain details of a response. Examiner interviews are intended to help move a patent application through the examination process faster and with more clarity. Interviews with your application’s patent examiner can make all the difference in getting a patent application to final decision.
Patent examiner interviews are a part of patent prosecution. Patent prosecution is the fifth and final step in the Carson Patents 5 steps to patent. Examiner interviews are a pre-grant patent service. These interviews have the ability to minimize and remove any confusion or issues brought forward in the application in order to get to a final decision in an accelerated manner. These discussions with the patent examiners are an element of the USPTO’s compact prosecution efforts. Read more about patent examiner interviews in the Manual of Patent Examining Procedure (MPEP) Chapter 700, Section 713.
5 Benefits of having your Patent Attorney Conduct an Examiner Interview
Having your patent attorney conduct an examiner interview on your behalf can provide numerous benefits, including legal expertise, clear communication, objectivity, negotiation skills, and a greater chance of success in the patent application process. Your attorney can help you prepare for the interview, anticipate any questions or issues that may arise, and ensure that your application complies with all relevant laws and regulations. They can also communicate your ideas and arguments in a clear and concise manner, negotiate with the examiner on your behalf, and work towards a positive outcome for your application. Ultimately, working with a patent attorney can increase the likelihood of your application being approved and help you navigate the complexities of the patent application process.
Having your patent attorney conduct an examiner interview on your behalf can provide numerous benefits, including:
- Legal Expertise: Your patent attorney has the legal expertise to understand the intricacies of patent law and how it applies to your application. They can help you prepare for the interview, anticipate any questions or issues that may arise, and ensure that your application complies with all relevant laws and regulations.
- Clear Communication: Patent law can be complex, and it may be difficult for a layperson to communicate their ideas clearly to the examiner. Your patent attorney can communicate your ideas and arguments in a clear and concise manner, ensuring that the examiner understands your application and its unique aspects.
- Objectivity: Your patent attorney can approach the examiner interview with an objective perspective. They can identify any potential issues or weaknesses in your application and work with you to address them proactively.
- Negotiation Skills: Your patent attorney can negotiate with the examiner on your behalf. They can present your arguments in a persuasive manner, address any objections or concerns the examiner may have, and work towards a positive outcome for your application.
- Greater Chance of Success: With the help of a patent attorney, you have a greater chance of success in the examiner interview. Your attorney can help you navigate the complexities of the patent application process and increase the likelihood of your application being approved.
Having your patent attorney conduct an examiner interview can provide numerous benefits that can help you achieve success in the patent application process. Their legal expertise, clear communication, objectivity, negotiation skills, and greater chance of success can all contribute to a positive outcome for your application.
When and How to Request an Interview with a Patent Examiner
A patent applicant can request an examiner interview anytime while a patent application is pending. For most patent applications, the time to request an examiner interview is after receiving the first office action. Generally, you cannot request an examiner interview before the examiner has sent an office action unless (1) the application is an accelerated examination patent application, continuation application, or substitute application or (2) the examiner agrees to a request from the patent applicant. Our experience indicates that patent examiners are agreeable to interview requests where there are well planned questions related to issues in the patent application.
The usual time to request an examiner interview is when there are issued raised by the examiner that need to be addressed in order to move the application into a condition for allowance. This usually happens only after receiving the first office action on the merits from the patent examiner.
How to Schedule an Examiner Interview
The USPTO has a website tool that allows applicants to schedule an interview with their examiner regarding their pending patent application. The USPTO Automated Interview Request (AIR) is requested through an online form. You can expect an examiner to reach out to you with an email confirming your AIR within two business days.
Alternatively to request an interview, an applicant can submit an “Applicant Initiated Interview Request” form (PTOL-413A) as their USPTO examiner interview request. This form must identify the participants of the interview, the proposed date, and the method of meeting (in-person, over the phone, through video, email, etc).
Final set up of the day and time for the interview meeting is usually determined after the examiner responds to the interview request. Interviews are available in-person, by phone, or online via video conferencing. E-mail, texting, and instant messaging are not means of conducting interviews. Video conferences must be hosted by USPTO personnel. It is not permitted for applicants or another third party to host the video interview.
In order to request and get an examiner interview, there must be authorization for electronic communications with the USPTO. The authorization must either already be on file or must be submitted with the request for an interview. There is specific language needed in an authorization for electronic communications with the USPTO: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
A brief description of the proposed issues to be discussed during the examiner interview must also be included with the request for interview. This process allows the examiner to prepare ahead of time and be ready to discuss the issues at hand. Once the interview has concluded, it will be necessary for an interview summary to be written for inclusion in the patent application file. Importantly, the interview summary is not a responsive communication to an office action containing rejections and objections.
Important Tip: An interview with an patent examiner cannot and does not substitute an office action response.
How to Write Patent Examiner Interview Questions
Before scheduling an examiner interview, the interviewer will need to write out what they will be discussing during the meeting and create a brief summary of the proposed issues to be used when scheduling. The content of an examiner interview should be focused on correcting any misunderstandings and any potential amendments proposed to place the application in a condition for allowance. Inventor and patent practitioner questions frequently focus around amended claims that might then be submitted as part of a complete and proper response to an office action from the examiner.
From our experience, the best way to write examiner interview questions is to first draft any amendments or corrections needed for the parts of the patent application. Patent application amendments will be centered on fixing the patent application to address any rejections or objections raised by the examiner. After any amendments or corrections to the patent application are drafted, it is best to write up the description of the proposed issues to discuss that will be sent to the examiner or submitted into the patent application prior to the interview when scheduling. This often done in the form of questions about any amendments or corrections to the patent application.
Questions are a valuable part of examiner interviews. The questions can be the brief description’s content about the proposed issues to be discussed that needs to be submitted when requesting a patent examiner interview. Good examiner interview questions are specific and offer the examiner a convenient means to address the issues raised.
How to Interview the Patent Examiner
Examiner interviews are conducted essentially like any other important meeting. All interviews and any communications regarding the interview are made of record in the patent application. From the request for the interview and any documents sent to the examiner, everything that is part of the interview will be in the patent application file (also called the image file wrapper) at the USPTO.
If an electronic record is not created during the interview, a summary of the interview must be. Generally, this means that either the person conducting the interview or the patent examiner will have to write and file a summary of the contents of the interview after it is completed. In patent parlance, either the patent examiner or the applicant/applicant’s representative will need to file a PTOL-413 Interview Summary after the interview. This is also called the USPTO Interview Summary.
The actual examiner interview may be started by calling the examiner, going to the patent office where the examiner works, or joining a video conference hosted by the USPTO. Conducting the interview will then follow. Usually the examiner will start by discussing the issues you raised in the questions and content sent to the examiner/submitted into the patent application prior to the meeting. Most patent examiner interviews are conducted by the patent attorney or patent agent representing the patent application.