TAKEAWAY: Applicants should take advantage of interviews to clarify the examiner’s position and explore options to move prosecution forward.
The USPTO relies on case law, rules, and automated processes to facilitate patent prosecution. Critical aspects of patent prosecution involve effective communication with the examiner. Below are strategies that can lead to more efficient prosecution and favorable outcomes for applicants.
- Request examiner interviews whenever possible. Examiner interviews can reduce potential misunderstanding or friction in written replies. Telephone interviews are common and promoted by the USPTO to facilitate prosecution. An interview can be an opportunity to clarify any rejections and to ask questions.
- Use interview agendas. Giving the examiner an idea of what you would like to discuss is likely to lead to a more productive interview. An agenda with sufficient detail can allow the examiner to prepare beforehand and lead to a more substantive interview. Practitioners should keep in mind that the agenda usually becomes part of the official record. While proposed amendments are not entered unless and until they are submitted formally, practitioners should take care to only include information they are comfortable having on record.
- Ask the Examiner for their interpretation of claim language. There can be a disconnect between the meaning an applicant intends the claims to have as compared to the meaning ascribed by an examiner. Practitioners can ask the examiner for their interpretation of claim language to avoid misunderstanding and clarify a rejection.
- Have one or several features in mind for potential claim amendments. It can be beneficial to have one or several potential amendments in mind. The format of an interview allows for informal discussion of different features and whether they help to distinguish over a cited reference.
- Ask the examiner for suggestions for moving prosecution forward. Examiners are usually very familiar with prior art references in their technology area. It can be beneficial to ask an examiner for suggestions on which direction may help move prosecution forward and claim limitations they believe favor allowability.
These tips are general guidelines and of course may not suit every situation. Practitioners should evaluate the issues of each case and decide when and how to conduct interviews.