Feb 232013

When my wife’s doctor found out I was going to have an interview at the Patent Office, she asked why I didn’t like my current job. In patent circles, there is no such possible misinterpretation for what an interview is.  Conducting an interview is most often thought of as meeting up face-to-face or over the phone to speak with an Examiner on the merits of the patent application you are advocating for.  Besides personal meetups or scheduled phone calls, interviews can also be broadly interpreted as any personal appearance, phone calls, video conferences or emails that present matters for the examiner’s consideration.  See MPEP 713.

An Interview is Advantageous

A number of big benefits to conducting an interview with the Examiner include (1) a great way to discuss key points about your patent application’s rejections, (2) a way to get the Examiner on your side of the argument, (3) a way to quickly clear up any misunderstandings, and (4) the content of the interview can be off the record, which avoids creating file history estoppel.

Setting up the Interview

An applicant is not entitled to an interview as a matter of right. Whether the Examiner will grant an interview is within the discretion of the Examiner. For example, the MPEP states that “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.”  See MPEP 713.01(III). The MPEP also states that to arrange an interview, an applicant should send in an Applicant Initiated Request Form.  See id.  The rules requiring a request tends to suggest that getting an interview is no guarantee. Further, it is even more difficult to schedule an interview after a final rejection has been issued  See MPEP 713.09 (explaining that normally only one interview is permitted after final rejection). Thus, it is important to properly set up the interview so that the Examiner acquiesces to the request.

How to Contact the Examiner

The MPEP provides that an interview can be arranged for by letter, facsimile, electronic mail, telegram or telephone call. I don’t know of anyone still using telegrams, but in my experience, a phone call is the best way to reach an Examiner for setting up an interview. Call the Examiner, let him know which application number you’re calling about, and politely request an interview for the matter. As discussed above, as one of the main reasons an examiner will grant an interview is to advance prosecution of the application, it might be helpful in your request to explain how you believe the interview will help move the process forward.

Resistance to the Interview

Some Examiners will try to be resist an interview request. Some may be just acting adversarially, leery of outsiders contacting them. One time, an Examiner told me that I could not interview for the matter because I was not specifically authorized by the client, alleging that I needed to be “of record.” You hear this excuse every once in a while. An old provision of the MPEP (713.05) required that an applicant’s representative show that he had explicit authority from the client to conduct the interview. However, this changed with the August 24, 2010 guideline under Director Kappos, which states that the Applicant Interview Request Form is sufficient indication of authorization since it provides for the representative to sign. Sometimes it is helpful to educate Examiners on recent changes in Patent Office procedures.

Other resistant Examiners may seem convinced that there is no way prosecution can advance and that there’s really no point to an interview. You may try to explain why you think the interview will be helpful (i.e., you have some clarifying amendments to discuss).

Other resisters may just not want to talk people. It is important to know when meeting such resistance that interviews are highly encouraged at the Patent Office. So go set up your interviews with confidence knowing that it is a good thing for your application and for the patent system in general.

 Posted by at 2:21 pm