(Some Of) The Value Of Examiner Interviews
Written by Ben Esplin
At Esplin & Associates, we have an approach to prosecuting patent applications at the USPTO that has been developed and refined over the years. Some of our strategic principles have been passed down from mentors who taught us the craft, others we have derived on our own through experience and intentional experimentation.
One of the cornerstone principles that we have grown to rely upon is the use of Examiner Interviews early in the application process. In fact, in patent applications that do not claim priority to a previous application, we request an Examiner Interview by default after we receive the very first Official Action from the USPTO.
We usually perform these interviews by telephone, and they are typically scheduled for 30 minutes. As another strategic ploy, we also often ask our client/inventor to join the call, so all of the interested parties are present and accounted for.
At least some of the advantages of real time communication with an examiner, versus the asynchronous (and expensive) method of communicating through written record (i.e., through Official Actions from the examiner and Responses filed by the applicant) should be apparent. While working as a patent examiner early in my career, I quickly came to appreciate the efficient and effective exchange of information that can be accomplished in a real time conversation, and noted how much more quickly issues were resolved in these conferences in comparison with cases in which no interviews were conducted. For this blog post, I want to highlight a couple of key advantages for the client/inventor who joins her attorney for an Examiner Interview, as we often encourage inventors to do.
Typically, examiners are enthusiastic about technology, but lukewarm on argumentative attorneys. Having an inventor join a call to provide context by talking about their invention and the process they have undertaken to pursue and commercialize it seems to connect with examiners. Often, leading off an Examiner Interview with a quick narrative by the inventor leads to significantly more engagement from the examiner over the course of the call.
There are, literally, thousands of patent examiners at the USPTO, and an applicant has little control over which examiner is assigned their application. However, I believe that aside from the selection of a patent attorney, the next most important parameter for an applicant is the examiner to whom their application is assigned. As is the case anytime there are thousands of people doing a single job, some examiners are exceptional, most are very good, and some are, for lack of a better term, arguably competent. When a client/inventor joins an Examiner Interview, they find out for themselves who is on the other side of the table. This is a significant advantage in the attorney/client relationship because if the examiner is perceived to be lacking, it is a direct perception by the inventor/client, and it is not an unfortunate factor that has to be reported by us.
As such, among other advantages, conducting an Examiner Interview with an inventor/client after an initial Official Action provides an opportunity to establish a meaningful connection between the examiner and the case, and gives the inventor/client meaningful firsthand insight into the ongoing process of prosecution that is just getting underway. Most attorneys wait until an application is “stuck” before reaching to schedule an Examiner Interview, but we find being proactive with this tool serves our clients.