How to Prepare for, Conduct and Conclude Examiner Interviews
Each patent attorney has his or her own technique with respect to how to prepare for and conduct interviews with Examiners. However, there are certain fundamentals that
should be considered to effectively conduct Examiner Interviews. Careful preparation is one of the most important aspects of conducting Examiner Interviews.
Before setting up an Interview with an Examiner, the attorney should identify possible issues to be addressed with the Examiner. This will also help in determining who
should attend the Interview. For example, to discuss procedural or legal issues, it may be appropriate for only the prosecuting attorney or agent to attend. However, to
discuss complex technical issues, it may be beneficial for the inventor or company representative to attend along with the attorney or agent. The inventor, for example,
can be particularly helpful in interviews prior to the first Office Action where the purpose is to educate the Examiner and provide the Examiner with a better
understanding of the technology and the invention.
In addition, identifying the issues to be discussed helps to determine whether evidence needs to be presented at the Interview. For example, a demonstration of the
invention itself may help the Examiner to better understand the invention and the differences between the invention as claimed and the cited art. Identification of the
issues to be discussed will also help the attorney or agent to determine whether it is necessary for the inventor or a technical expert to attend. If evidence is
to be presented, then the attorney or agent should inform the Examiner ahead of time.
Once the participants and issues are identified, the attorney or agent should contact the Examiner to conduct the Interview. Generally, the Interview should be
scheduled one to four weeks in advance, and one to four weeks before the Response is due, if possible. When scheduling the Interview, the attorney or agent should
determine whether the Examiner has decision making authority. If not, it may be wise to request that the Supervisory Patent Examiner (SPE) or Primary Patent Examiner
be in attendance along with the Examiner. Having an Examiner with decision making authority will generally be more productive and assist in advancing prosecution of
the application.
Once the Interview is scheduled, the Examiner may request that the attorney or agent fax a copy of the Interview agenda, i.e., Applicant Initiated Interview
Agenda. The agenda will generally include issues and/or proposed amendments. However, attorneys and agents should be careful as to what is written on the agenda, as
this document becomes part of the file history. For this reason, generally stating issues on the agenda may be a sufficient way to minimize prosecution history estoppel
while still providing the Examiner with an overview of what is to be discussed.
Preparation for the interview should not stop after scheduling the Interview with the Examiner, but rather further careful study of the case and preparation should take
place before the Interview. Generally, the attorney or agent attending the Interview should review the case for a couple of hours. He or she should generally prepare a
primary argument with multiple fallback positions. As discussed below, this will allow the attorney or agent to have more chances of advancing prosecution during and
having a successful Interview.
When the inventor or company representative is present, it is beneficial to prepare the inventor or company representative for the Interview. The attorney or agent
should inform the inventor or company representative of what typically occurs at the Interview, and what tactics he or she wishes to employ. For example, the attorney
or agent should hash out with the inventor or company representative who will discuss what subject matter. Also, the attorney or agent should remind the inventor or
company representative to stay focused on the claims, and not discuss matters that may negatively affect the case - for instance, stating that an unclaimed feature
is "necessary" since it is in a commercial embodiment, but the feature is not actually technologically necessary to practice the invention.
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When conducting an Interview, there are general guidelines that an attorney or agent should follow. First, it is important for the attorney or agent to arrive on time.
If he or she is late or going to be late, then the Examiner should be notified accordingly. Second, the Examiner should be treated with the utmost respect. The
attorney or agent should remember that the goal of the Interview is to advance prosecution and berating the Examiner is unlikely to be productive.
When opening the Interview, the attorney or agent should provide the Examiner with an overview of the invention. If the inventor is present, then it may be beneficial
for the inventor to provide the general overview of the invention. The overview should include information as to why the invention was made, what problem the invention
solves, what benefits the invention has, why the invention is important, etc. Such information will provide the Examiner with a better understanding of the nature,
functionality and purpose of the invention.
Once the general overview is provided to the Examiner, the attorney, agent, or inventor can then attempt to resolve any legal issues that are outstanding in the case.
If there is an art-based rejection, the attorney, agent, or inventor can explain to the Examiner the differences between the invention and the cited art. When
explaining the differences, it is generally beneficial to distinguish the claim language from the cited prior art. For example, the attorney or agent can use the claim
language and the figures of the application to assist in distinguishing the claims over the cited art.
If the Examiner, during the Interview, hints that the claim language is too broad, then offer some proposals to overcome the cited art without surrendering too much of the
claim scope, if possible. Generally, the attorney or agent should prepare some alternative claim language prior to the Interview as a fallback position. On many
occasions, all that is required is a simple tweak of the claim language to overcome the cited art. For this reason, make sure that the proposed claim amendment does not
narrow the scope of the invention too drastically.
Also, the Examiner may provide some alternative language that may further advance prosecution. Such language should be considered. If the alternatives provided by the
Examiner are too narrow, then the attorney or agent should try to negotiate with the Examiner for claim language that is acceptable to the Examiner and would overcome
the cited art.
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When the issues are satisfactorily addressed, or as much progress has been made as is possible, the attorney or agent should conclude the Interview. At the conclusion
of the Interview, the attorney or agent should request for an Interview Summary to make the substance of the Interview of record. On the Interview Summary sheet, the
Examiner should be requested to provide a general overview of the Interview. For example, if some proposed amendment was agreed upon, then the attorney or agent should
ask the Examiner to indicate that “the proposed claim amendments appear to distinguish over the cited prior art, subject to further consideration and/or search”, or
something similar. If there was no agreement, then the Examiner could be asked to simply indicate, “claims were discussed, and no agreement was reached.” Such
information on the Interview Summary will clearly show the final result of the Interview.
The attorney or agent should remember that whatever the Examiner states on the Interview Summary sheet will be placed into the record. Therefore, it may be wise to
ask the Examiner to keep the Interview Summary generic, and not include too much detail that may damage the case in the future, i.e., prosecution history
estoppel. Also, attorneys or agents should review the Interview Summary not only for its accuracy but also to make sure the summary does not create unanticipated
estoppel or indicate something that was not agreed to.
Examiner Interviews can be an effective tool to advance prosecution in a case without making much of the discussion of record. If performed carefully and effectively,
such Interviews can reduce the number of prosecution iterations needed to obtain a patent and significantly reduce the overall cost of prosecution. This may lead to
the mutually beneficial result of a happier client and more future work for the attorney or agent.
