Oral communication is often more effective than written communication.
Once I’ve been through a round of written responses with a patent examiner, if I feel that the examiner is not being receptive to my position, I will conduct an interview with the examiner. Often, the examiner will indicate that he or she had not fully grasped the position before and now better understands the distinctions between the claimed invention and the prior art. Even in cases where I don’t get the examiner to agree with me, we usually understand each other’s position better which enables me to better advise my client on how to proceed with the case.
It is often easy for an examiner to cut-and-paste language from previous office actions when responding to an applicant’s amendment. Sometimes this is because the examiner doesn’t fully appreciate the applicant’s position, sometimes this is because the applicant and examiner are talking past each other. An interview can often resolve these issues as the examiner must listen and consider the applicant’s postion without resorting to cut-and-paste.
This isn’t to say that all interviews are successful. Many examiners are not used to oral communication and will be non-committal. This is especially true for junior examiners. Junior examiners do not have authority to allow claims without review by a senior examiner or supervisor. Thus, examiner interviews with junior examiners require a senior examiner with such authority to also be present. The problem is that the senior examiner has his or her own docket and often is not familiar with the application and issues or is not prepared for the interview. Such interviews can be frustrating and maybe even unhelpful.
In any event, even if the interview does not result in allowance of the claims, I have more information about the application and the examiner’s position than I did prior to the interview. I can advise my client that the examiner will not be persuaded. Perhaps we are more likely to get a positive result through appeal rather than another round of responses.
Interviews are not a way to avoid making comments on the record that become part of the prosecution file. If there is an outstanding office action, most examiners will require the applicant to send in a proposed amendment or set of arguments that will become a part of the record. This can sometimes be avoided if the interview is conducted after a response has been filed. After the interview, a written summary is prepared by both the examiner and the applicant that becomes part of the file.
Nonetheless, if I determine during an interview that a particular argument is clearly not going to persuade the examiner, and I don’t think the argument is vital to the case, I may omit it from my next response, thereby keeping it out of the record.
Director Kappos has recently touted the PTO’s increased use and emphasis of the examiner interview program. He noted that interviews are up about 50% over the number conducted 2 fiscal years ago. Applicants speak positively about their reactions.
In sum, I applaud Director Kappos for increasing emphasis on examiner interviews as a way to advance prosecution. The pre-exam interview program should also be of great help in this regard.