In most instances, patent attorneys should conduct patent examiner interviews. An examiner interview is an opportunity to speak directly with the examiner to address the issues contained in the office action. Unless the issue is simply correcting a formality, your odds of securing a successful outcome are almost certainly greater if you participate in an examiner interview.
Power of verbal communication
In an age where personal interaction is at all time low thanks to technology, we must remember the power of verbally communicating with our fellow humans. These examiner interviews provide applicants and their attorneys with the ability to verbally communicate with the examiner. Ultimately, the goal is to build a respectful and friendly relationship with the examiner, which can be incredibly powerful. It can be the difference between convincing an examiner to change his/her position and receiving another rejection.
Examiner interviews also provide an opportunity for both parties to more clearly convey their understanding of the invention and their interpretation of the claims. Written communications do not always provide the most clarity and can often result in misunderstandings. In addition, it is much easier and quicker to verbally clarify points and clear up misunderstandings.
You also have a rare opportunity to request the examiner’s input on how to improve the patentability of the claims. Appealing to the examiners ego can result in an examiner providing claim language to traverse the examiner’s own rejection. Examiners don’t typically reject their own language, so you can drastically improve your chances of an allowance by asking for their input.
Another important distinction between written and verbal communications is ambiguity in tone. One’s tone can be difficult to ascertain in written communications. In contrast, a good communicator can use his/her tone to convey respect and avoid creating an adversarial relationship. Adversarial relationships should be avoided if you want to advance prosecution and your tone of voice can be helpful in achieving this result.
Access to decision makers
Interviews are also almost a necessity when working with a junior examiner. Junior examiners are often instructed to take certain positions and do not have the authority to issue an allowance or overcome certain rejections. Thus, it is beneficial to request an interview with the junior examiner and the examiner’s supervisor. Ultimately, the supervisor holds the key to an allowance, so you should work directly with supervisor whenever possible. An examiner interview guarantees you the opportunity to do just that.
According to Big Patent Data examiner interviews following the first office action result in an allowance in roughly 40% of applications. Smith & Hopen has seen even greater success. As shown below, roughly 70% of S&H applications result in an allowance following an interview.
Examiner interviews are a must. You will spend less money combatting less office actions and you will secure patent rights much sooner. S&H conducts examiner interviews in almost all cases. As a result, we average almost 1.5 less office actions per application than the national average. We also secure patent rights 11 months quicker than the national average. This success is built in part on our examiner interview practice.