The USPTO recently unveiled a new tool for scheduling examiner interviews. Dubbed “AIR” (Automated Interview Request), the new tool is a simplified online form for scheduling both phone and video conference interviews, designed to eliminate the “phone tag” that sometimes occurs when trying to reach a busy examiner at their desk. The new service boasts that it will give you greater convenience to schedule interviews on your time, as well as a confirmation from the interviewer in just two business days. Examiners are also supported by interview experts in each technology center, who will offer technical support in addition to facilitating the interview with the examiner.
While the new AIR form and option of video conferencing is a nice convenience from the patent office, substantially, the rules and best practices of examiner interviews have not changed. Only the USPTO’s Internet usage policy on the authorization for video conferencing tools is changing, as detailed in the federal register. The rules for examiner interviews as stated in MPEP section 713 are the same. Practitioners should therefore continue to follow the existing recommended practices before, during, and after examiner interviews.
The goal of any interview should be to advance the prosecution, as such, practitioners should go into an interview with the intent of fostering discussion. The approach should be collaborative, not adversarial. The best times to request an examiner interview are when the conversation between examiner and practitioner breaks down due to misunderstandings concerning the nature of the invention or disagreements over rejections. This may even occur at the first Office Action.
To help prepare for the interview, the practitioner should submit an agenda to the examiner before the interview to give the examiner time to familiarize themselves with both the issues and arguments present, though beware that the agenda may end up in the official record, so lengthy arguments and proposed amendments are not recommended in the agenda.
Practitioners should use interview time to help the examiner understand both the invention and how it differs from any prior art cited with regard to the claim language. The big picture overview of the invention is helpful for putting the application into context. This understanding goes both ways, in that practitioners can ask examiners to better explain their reasons for issuing rejections. For example, some examiners may “feel a claim is too broad”; this is not a good reason to reject the claim. Asking the examiner what they consider to be novel is a good way to get negotiation going, with the added advantage of being able to gauge the examiner’s response to prosed arguments and amendments in real-time.
Disappointingly, the patent office has passed up an opportunity to change their stance on recording interviews. Prosecution history is one of the primary sources of evidence in claim interpretation, but neither examiners or applicants are required to submit details of the arguments presented in an interview. Short summary statements on the results are typically all that are entered into the prosecution history. This can cause a vital argument conducted during the interview to be lost. Likewise, when interview records do not discuss rationales for an amendment to the claims, it may create ambiguity or estoppel when arguing why an amendment might have been made. Of course, if you prefer some things to be off the record, this might be an advantage to you… until your patent is the subject of litigation.
Examiner interviews remain a vital tool in any practitioner’s toolbox. The USPTO has taken another step in their commitment to a more efficient and user-friendly experience. The process towards “better-quality patents” as Director Iancu has stated, still hinges on our ability to effectively communicate our client’s inventions to examiners. New conveniences are nice, but our job remains fundamentally the same—and it doesn’t end at the Notice of Allowance.