Using Examiner Interviews to Advance Patent Applications
It may be hard to imagine that patent applicants and examiners have common goals.
From 2008 to 2012, the percentage of examiner interviews conducted for U.S. patent applications nearly doubled from about 15 to 30%. In 2012, 90% of applications in which examiner interviews were conducted were allowed, compared to a 61% allowance rate for patents in which no interviews were conducted. These trends have continued.
Examiner interviews can increase the probability of an allowance and reduce the number of written responses, thereby reducing the cost of patent prosecution and limiting potential estoppel. The First Action Interview Pilot (FAIP) Program that began in 2011 enables applicants to discuss applications with an examiner before receiving a First Office Action on the merits. The first action allowance rate for applications in the FAIP Program is currently 29.8%, compared to 11.9% for new, non-continuing applications.
Interview Help and Tips
To help applicants prepare for interviews with examiners, the U.S. Patent and Trademark Office (USPTO) provides Interview Practice Guidelines for Applicants and Interview Practice FAQs online, as well as an entire Interview Practice webpage. Interview Best Practices, developed in a collaborative effort between the American Intellectual Property Law Association (AIPLA) and the USPTO, states that interviews are intended to “help to advance prosecution and identify patentable subject matter in accordance with the patent statutes,” and cautions that “examiners and applicants should not conduct interviews as adversaries, but rather, should conduct interviews with the objective of meeting the common goals of advancing prosecution and resolving issues.”
When examiners initially reject 90% of all applications and average nearly three rejections in every allowed application, it can become difficult for an applicant not to feel like patent prosecution is an adversarial, win/lose process. It may be hard to imagine that applicants and examiners have common goals that they are trying to achieve. However, an understanding of the examiner’s situation can be helpful. An examiner interview can provide an opportunity to work in a cooperative manner with an examiner to further the prosecution of an application.
While examiners are encouraged to hold interviews with applicants, examiners are only given one hour of “non-examining time” to prepare for, conduct, and document interviews. Being mindful and respectful of examiners’ time is important. According to the Manual of Patent Examining Procedures (MPEP), “It is the responsibility of all participants to see that the interview is not extended beyond a reasonable period, usually 30 minutes.”
An examiner’s interview should forward the prosecution, and to this end examiners will generally request an applicant to submit an agenda with proposed claim amendments. During an examiner interview, an applicant should not re-present the same position/arguments previously presented on the record and should resist presenting alternative multiple claim proposals for the examiner’s consideration that were not submitted prior to the interview. “Fishing expeditions” that are attempts to “sound out” examiners or are used as an opportunity to propose random claim amendments while trying to obtain agreement on an allowance should be avoided. It should be the examiner’s exclusive option to volunteer what he/she feels is allowable.
Developing a good relationship with an examiner during an interview can be invaluable whether or not agreement is reached. If agreement is not reached, the application will remain in the examiner’s jurisdiction and it will be necessary to continue to work with the examiner. In the likelihood that an applicant has and/or will have other applications before the same examiner, seeding and developing a good working relationship with the examiner will yield future benefits. Examiners will generally be willing to conduct an interview at any stage of the prosecution when they foresee that an interview will advance the prosecution of an application.
Michael Gzybowski is an intellectual property attorney with Brinks Gilson & Lione. He has over 30 years of experience, including serving as a patent examiner at the U.S. Patent and Trademark Office prior to entering private practice. He can be reached at firstname.lastname@example.org.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.