Examiner Interviews:
The Potential to Affect Cost and Patent Scope


The Bottom Line. Being in proximity to the United States Patent and Trademark Office gives my law office the added advantages of an easy and low cost examiner interview in response to an office action. This can often make the difference in explaining the invention, clarifying what details require addressing in a written response and better chance of avoiding mistaken issues that can directly affect the scope of patent protection. A telephone interview is usually preferred by examiners, but for a complicated invention, it is sometimes valuable to have the potential to schedule an in-person visit with the examiner.

Patent Prosecution. The period after a patent application is filed and until a patent is issued or the application is rejected, is often called the period of patent prosecution. Patent prosecution is simply implementing the appropriate responses to actions by the patent office on a patent application.

Office Action. It is very common for a patent examiner to issue an objection or rejection of a patent application. This is usually done in writing and is called an “office action.” An objection or rejection is probably most often sent because of other patents the examiner has found (called prior art). The examiner believes the prior art he has found either covers the same invention or makes it an obvious improvement over the prior art. These are reasons for rejection of a patent. Numerous other reasons for objecting to an application are possible and are based on the patent statutes and associated regulations. Some rejections or objections may even arise as a result of the examiner’s misunderstanding of the claimed invention. However, each such office action by an examiner requires a positive response from the applicant to address it; otherwise the application becomes abandoned. Some typical responses include filing affidavits or declarations traversing rejections or objections, amendments may be requested, or an explanation may be made with a request to reconsider. No matter what the response, each such response becomes part of the prosecution history of the patent, which is documented in the official “file wrapper” for the application.

So What? The scope of a patent can be significantly curtailed by its prosecution history. See a discussion of this on this Law Firm’s  infringement page. It is called “prosecution history estopple,” or “file wrapper estopple.” A patent’s scope is defined not only by its literal claims, but also by the equivalents to what is claimed. Essentially, whatever in the file wrapper indicates a change in the application to further define or narrow the scope of the invention in order to obtain a patent, will probably cause the applicant to surrender scope. In other words, someone you consider to be infringing on your invention with what you think are only minor changes, may be able to do so without liability.

What Does Proximity to the United States Patent and Trademark Office Have to Do with It? The goal is to minimize changes to your application. Many such changes are unavoidable. However, some are avoidable and these avoidable ones can affect your patent scope.

After an office action is received, the applicant’s representative may request an interview with the examiner pursuant to Patent Office regulations (10 CFR 1.133). Such an interview is not always necessary, but it is usually a good idea to get the examiner’s reaction to any proposed amendment to the claims.

Whether to hold the interview in-person with the examiner or simply by telephone is a matter of judgment, often determined by the convenience for the examiner. Many examiners are “hoteling,” which means that they are usually not physically present on the USPTO campus in Alexandria, Virginia, but rather work out of their homes. So, scheduling an in-person visit can require the examiner to make a trip to the office. When a personal visit with the examiner is necessary is a matter of judgment. Having the option can be a good prosecution step for the benefit of the applicant. Being able to meet at the patent office with minimal travel expenses and minimal time consumption directly translates to lower cost for the applicant when an in-person visit is needed. Interviews, whether by telephone or in-person serve to clarify the details of what the examiner sees as the problems. If errors were made, it is a way to bring them up and correct them with the least amount of written material added to the record. If amendments are needed, it is the best way to focus in on exactly what needs to change to satisfy the objection or rejection.

Conclusion. Thus, an examiner interview often gives the applicant’s representative a chance to steer the prosecution history towards a path best serving the applicant. Being your representative and being near the patent office makes having an in-person interview an option and a relatively less costly task for your benefit.

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