A patent applicant can request an examiner interview during most stages of patent prosecution, which allows the applicant to have patentability discussions with the U.S. Patent and Trademark Office (USPTO) examiner reviewing the applicant’s pending application. Examiner interviews can be conducted in person, or more commonly, over the telephone. Examiner interviews are not guaranteed. Used appropriately, examiner interviews during the prosecution of a U.S. patent application can help expedite prosecution and reduce costs. They can be used to answer applicant’s questions about issues raised by the examiner, or to further clarify if there is common ground where the applicant and examiner can agree on acceptable claim language for novel subject matter.
The Manual of Patent Examining Procedure (MPEP) provides official guidance to applicants and patent practitioners in preparing for, conducting, and summarizing interviews.
Requesting an interview: Interviews can be requested in a variety of ways, including filing a formal written request with the USPTO. The can also be informally requested with a call to the examiner. You will want to call well in advance of any response coming due. It can take several weeks to schedule the interview and you will want sufficient time to prepare your response following the interview. Avoid calls at the end of a fiscal quarter when the Examiner is busy meeting quotas.
Most examiners will ask the applicant to submit an agenda by fax or email in advance of the interview to summarize issues for discussion. Even if an examiner does not make such a request, it can be advantageous. Identify who will be on the call and the specific claims or prior art references you intend to discuss. Only inventors and registered patent practitioners can participate in an interview. You may also include proposed claim language for overcoming the prior art, especially for independent claims. Most examiners will prepare for the interview if you give them a detailed agenda. When examiners are asked to consider arguments or amendments for the first time on the spot, they can be less willing to reach agreement during the interview.
During the interview: In discussing why the claims distinguish over the cited art, it can be helpful to explain the invention, summarize the prior art, and highlight the differences between the prior art and the relevant claim language. Identify what the applicant and the examiner agree on and ask the examiner for any claim amendment suggestions and what features of the invention, if any, appear to be novel from the examiner’s review of the application. At the end of the interview, be sure to confirm any agreement with the examiner. Also, ask if the examiner would be willing to contact the applicant if the examiner identifies any allowable subject matter or locates additional prior art in an updated search so that prosecution can move forward without going through another round of office action and response. This is something a more experienced examiner might agree to do more so than a newer examiner.
Applicant interview summary: Applicants must provide a summary of the interview on the record. An interview summary can be filed with the USPTO as its own document or can be included in the office action response filed after the interview. You should include the date of the interview, list the names of the people that participated in the interview, identify whether the interview was in person or telephonic, indicate whether agreement was reached on any of the claims and/or pending rejections or any potentially allowable subject matter was identified by the examiner in the interview.
Examiner interview summary: The examiner is also required to provide a summary of the interview on the record. They are generally very brief, from a few sentences to a full paragraph is typical. Be sure to read the interview summary. If there are any inaccuracies, the applicant can contact the examiner to discuss the discrepancies and ask for a corrected interview summary, or the applicant can file responsive comments.