The Impact of Examiner Interviews on Patent Prosecution Results
During an examination, the examiner may discuss the details of the invention with you and ask questions. Often, these interviews can be recorded for later review. However, there are some risks to recording examiner interviews: First, the duration of the interview may be misleading. Second, there is a risk of an accusation of inequitable conduct.
Make audio recordings of examiner interviews
Currently, the USPTO grants one hour of nonproduction time for examiner interviews. These interviews can be conducted either in person or by telephone.
These interviews have the potential to reduce the number of office actions needed before a patent is granted. In addition, they can also help resolve disagreements about prior art. In other words, fewer office actions may mean less wasted time and money for applicants and patent professionals alike.
The patent data suggests that the impact of examiner interviews on the patent prosecution process is substantial. Researchers examined a dataset containing more than one million patent applications with at least one interview. They found that applications that had an interview had a lower number of office actions before being allowed than did applications that did not. Similarly, applications that had an interview spent less than 1.5 years in the patenting process.
In addition to reducing the number of office actions, interviews may also signal to an examiner that a certain application or invention is of significant importance. For example, a former director of the USPTO might sit in the room during an interview, which could signal that the invention is important. And, Nobel laureates and other famous scientists can also signal that an invention is significant.
Interviews are also useful for applicants because they provide an avenue to explain arguments to an examiner. In addition, they can be used to demonstrate an invention to the examiner. For example, an applicant may bring a prototype to the interview, which can help the examiner understand the invention better.
A study of all patent applications filed with an interview from 2007 to 2020 also discovered that interviews are beneficial. For applications that are ultimately rejected, the number of office actions decreased by 3.3 when an interview was held. This is particularly true for applications with low allowance art units.
According to the study, examiners spend more than two hours per year on interviews in 2019. This is an increase from 2008, when examiners spent about sixteen hours per year. The average number of office actions required before a patent is granted is also lower.
Signal to the examiner that the invention is of particular importance
Applicants should be aware of a variety of tactics to signal to the examiner that their invention is of particular importance. Bringing in an expert can be a good way to demonstrate to an examiner how your invention works. It can also help to dispel confusion by offering to show them the invention itself.
Another tactic is to make your patent application as streamlined as possible. This can be achieved by using less office actions, which saves time. For example, if your application contains a single claim, you might want to use a continuation filing to extend the validity of your claims. You can also demonstrate your invention to an examiner during an interview, allowing you to demonstrate to an examiner how your invention enables the user to perform the claimed function. Alternatively, you may respond to an examiner’s report with a modification or elimination of rejected claims.
There is a lot to be said for a good patent examination. A good examiner can tell you about your invention and the citations in prior art that support it. These citations may be complementary to the invention under examination or they may be invented around the invention. The examination of these citations can be beneficial in that they allow the examiner to understand the invention better.
A recent study examined nearly 1 million patent applications with at least one interview. The findings showed that interviews can be a good indicator of the strength of your application. The study also showed that a well-timed interview can be a useful tool in shedding light on your invention and helping to reduce the misunderstandings that often plague patent examiners. This is particularly true in the case of high value patents.
The best advice is to keep your patent application compact, as well as to bring in an expert to explain your invention. The benefits of these actions include fewer office actions, which can be valuable time for you to invest in the patent prosecution process. These actions also signal to the examiner that your invention is important, which is an important consideration in patent examination.
Avoid accusations of inequitable conduct
Attempting to avoid accusations of inequitable conduct during an examiner interview is an important step in advancing an application’s prosecution. The interview is a mutually beneficial tool that can help the applicant and examiner resolve disagreements on certain issues in the application. It can also allow the applicant and examiner to determine whether or not it is appropriate to continue prosecution of the application. However, it is essential to recognize that the interview is a time-limited process. If an applicant is not prepared for the interview, the interview should be rescheduled.
The USPTO allows video conferences between examiners and applicants. However, these interviews must originate from USPTO personnel, and examiners must use USPTO-approved collaboration tools. If an in-person interview is necessary, examiners must make arrangements to meet with the applicant on a USPTO campus. In addition, the primary examiner must ensure that the interview does not exceed a reasonable time limit.
During an interview, the examiner should be prepared to identify claims, rejections, and prior art documents. If a common ground cannot be reached, the examiner should not hesitate to conclude the interview. Once the interview is over, the examiner should complete the “Substance of the Interview” portion of the Interview Summary form. The examiner should then check that the summary is accurate, and then provide the applicant with the form. If there are any outstanding issues in the application, the applicant should be notified of the issues. The examiner should then follow up with an office communication that includes an accurate version of the examiner’s argument.
During an interview, the applicant should make it clear to the examiner which topics are most important to him or her. The interview should be limited to a short time period so that the applicant and examiner can achieve their objectives. The parties should try to minimize interruptions during the interview. An attorney should be present for the interview.
Inequitable conduct allegations are common in patent litigation. A recent sitting en banc of the Federal Circuit clarified the standards for finding inequitable conduct. A former Chief Judge Rader described the doctrine as an “atomic bomb of patent law.” Inequitable conduct allegations can have a number of adverse consequences for patent owners and can expose the patent owner to antitrust claims.