February's advice article

To Interview or Not to Interview

Tips and information regarding patents and trademarks from the experts at the USPTO

One of the most useful tools during the patent prosecution process is an examiner interview. Interviews allow applicants and examiners to meet in-person, over the phone, or via video-conference to discuss particular issues during patent prosecution. The United States Patent and Trademark Office (USPTO) encourages interviews to clarify issues and advance prosecution because they have been shown to increase efficiency and patent quality. As a result, the number of interviews has doubled between 2008 and 2013.

Inventors should ask themselves a few questions when determining whether to have an examiner interview: Do I wish to explain how my invention differs from the prior art? Does the technology need further explanation? Do I feel the examiner’s interpretation of the prior art is different? Maybe there are better ways to claim my invention to capture the patentable features? Before having an interview, consider that time is limited for all parties, so coming to the table with well thought-out issues can make a good first impression.

When inventors employ an attorney, any examiner interaction they have must be through that attorney. Many times the attorney will do an interview without the inventor. Inventors should discuss with their attorney if it is necessary to participate. If an interview does occur, they should ask the attorney to discuss the content ahead of the interview and then meet afterward to review results.

A common reason attorneys exclude inventors from interviews is because the outstanding issue  has to do with claim interpretation. Claim language defines the legal boundaries of an invention and is the most scrutinized component of the application. Oftentimes, the examiner and attorney will discuss claim wording and not the invention itself. The USPTO hires scientists and engineers with the technical background to understand your invention and see how it differs from the prior art. However, the examiner must also ensure the claims are sufficiently different. If the attorney does want the inventor to participate in the interview, it is most likely to provide the examiner with technology specific information.

Preparation for the interview should begin with a thorough review of office communications and references cited by the examiner. The applicant should also draft a detailed interview agenda for the interview. If the applicant feels the prior art differs from his or her invention, an interview is a good opportunity to ask the examiner how to amend the claims to better define the invention over the prior art. When looking at prior art, inventors should remember to look at the entire document and not just the claims.   

More information on interview practice can be found on the USPTO’s Interview Practice webpage. This page is dedicated to information to assist applicants and their attorneys with interviews. It includes:

Also of interest is the First Action Interview Pilot Program, which can help examiners and applicants identify issues early in the prosecution.

Interviews are a great tool, but applicants should take time to consider if one is right for their case and how to get the most out of it. A little bit of preparation goes a long way.

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The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.