Interview the Examiner

General outline of an examiner’s interview

An applicant for patent may interview the examiner reviewing his/her patent application. The interview may be conducted at the United States Patent and Trademark Office (“USPTO”), by telephone or by video conference. Although the interview may be conducted before the initial review of the application by the examiner, the interview is usually conducted after the examiner has initially reviewed the patent application and mailed an Office Action. The Office Action is a document generated by the examiner objecting to the application for various informalities (e.g., spelling, faded drawings, etc.) and/or rejecting the claims recited in the patent application as attempting to claim existing technology (i.e., not novel) or new technology which is an obvious variation of existing technology (e.g., obvious).

Purpose of interview

The interview is a dialogue between (1) the patent applicant and/or the applicant’s legal representative and (2) the examiner. Some of the purposes of the interview are to:

1) Explain the specific benefits of the invention to the examiner;

2) Understand the examiner’s reasons for rejecting the claims; and/or

3) Receive feedback from the examiner regarding the claim language.

Preparation is key for best results

For best results, preparation is the key. The interview typically lasts approximately 30 to 60 minutes. The applicant and/or the applicant’s legal representative will be given a short period of time to concisely explain the reasons the invention is patentable. Preparation for the interview should revolve around the merits of the invention and the claims. For the interview, you may:

1) Provide a proposed amended claim set in advance for the Examiner’s review;

2) Provide a brief description of the arguments to be presented;

3) Demonstrate or exhibit the invention through videos or photographs;

4) Explain the benefits or advantages of the invention; and/or

5) Discuss the prior art references cited by the examiner in depth.

Detailed information in MPEP

More information on conducting the interview may be found at the Patent Office website in the Manual of Patent Examiner Procedure (“MPEP”). (MPEP Chapter 713).

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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