Modern Times Legal Patent Blog

In-Person Examiner Interviews at the USPTO

Posted on Sat, Apr 04, 2009 @ 05:53 PM

A couple weeks ago, I conducted my first in-person interview with an examiner at the United States Patent and Trademark Office. As I am based in Cambridge, Massachusetts, an in-person interview requires a trip to Alexandria, Virginia, which is an added cost for the client; so it is not feasible in every case. An in-person interview may, however, be a valuable option for cases that are particularly complex. I cannot discuss the particulars of any cases on this blog, though I can offer some general observations.

First, while I had previously conducted numerous telephone interviews on various cases, I found the in-person interview experience far superior and more effective. While a natural reaction is to want to use the majority of one's time during an interview trying to hammer home one's perspective, you may be particularly rewarded by also focusing on being a good listener.

Focusing on listening allows one to gain a much better insight as to why an examiner may be making some of his/her rejections. Regardless of whether you agree with all of those rejections, gaining a better understanding of the examiner's perspective can provide huge dividends (it's every bit as important for you to fully understand the examiner's position as it is for the examiner to understand yours); and establishing a strong, cooperative rapport is likely to expedite future prosecution by saving addtional exchanges of Office Actions and Responses as you fast-track the process of sorting out differing interpretations and perspectives with the examiner (just as you can expedite and improve the drafting of a patent application by meeting in-person with the inventors rather than relying solely on an exchange of documents).

Because you can better explain and discuss an invention via an interactive dialog, where you can observe the examiner's non-verbal expressions and gain better insights into the examiner's perspective and thought processes, an in-person interview can be a very shrewd and effective investment toward obtaining an expedited allowance of acceptable scope.

From Boston, ours was a surprisingly easy trip. US Airways has a shuttle leaving every hour from Logan. We left early in the morning (with no luggage--so no check-in or baggage claim delays) flew to Reagan National in about an hour and a half, jumped on the DC Metro and arrived at King's Street Station in about 15 minutes and then walked less than 10 minutes to the USPTO campus. As we had time left over after the interview before our afternoon return flight, we took a quick tour of the nearby George Washington National Masonic Memorial and enjoyed lunch on King Street in Arlington before heading back to the airport.

All in all, an enjoyable, stimulating, rewarding and productive investment of the better part of a day. The examiners, who were both very gracious, seemed to enjoy and appreciate it as well.

Tags: USPTO, patent prosecution strategy