Intro
This brief note is not legal advice and is for educational purposes only.
Examiner Interviews
So, you’ve decided to have an examiner interview rather than just responding on the written record. Here are some tips.
- The interview should be a collaborative process toward getting an allowable claim.
- Be really prepared. Thoroughly know the cited art and the invention and if you can’t explain the difference in 1 minute, then you’re in trouble. Have the application and cited art in front of you during the interview. The interview may only be 10-20 minutes, the examiner is busy also, so get to the point. If the examiner will talk longer, good to a point.
- Send the examiner a preview of the talking points/discussion in advance. If you’ve got something the examiner does not have – send it to the examiner before the interview.
- Only bring the inventor in on the interview to explain something you can’t. AND prepare the inventor as you need to keep them in control as they are thinking like an inventor, not an attorney, and might say something that sinks the invention like “I tried so and so and it didn’t work, so it was obvious to try this and that and it worked”. You’ve just shot yourself in the foot with the “obvious” and the “try”. Keep a tight lease on the inventor discussion.
- The examiner may be a jerk, don’t you be a jerk. I know it’s sometimes hard to keep your cool when the examiner does not know of what they speak. I once had a mechanical examiner asking me to prove how a voltage could cause a current to flow – UGH.
- Take notes and try to agree on something even it it’s only the examiner will further consider your remarks. If you reach agreement on a point – specifically state it.
ALWAYS follow up the interview with a written submitted on the record Interview Summary that lists these items:
- Date of Interview
- Form of Interview (telephonic, video, in person)
- Attendees – with labels like, examiner, inventor, attorney
- Exhibits – list any presented
- Claims discussed
- Art discussed
- Arguments presented to the examiner
- Other matters discussed
- Outcome of Interview
Be aware the examiner will also likely file an interview summary – so get yours in first as they may refer to it when they write theirs. Your interview summary can be submitted either before or with the office action response. Before is recommended.
