Guidelines from a Former Examiner on How to Perform Interviews at the USPTO

“The signatory authority of an examiner may possibly incentivize rejecting claims somewhat than permitting. Specifically, junior examiners have a greater incentive to reject patent promises and avoid indicating any allowable topic subject.”

The “interview” in the course of the patent prosecution course of action is a conference normally held in between a patent examiner and the applicant’s consultant (i.e., a patent practitioner). In some situations, the inventor, assignee, or a subject matter subject professional could also be current. In the course of my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would virtually normally motivate scheduling an interview with applicant’s consultant to go over the deserves. Curiously, a lot of patent practitioners are not proactive in initiating an interview with the examiner.

Why is an job interview so crucial? When and how should it be held? How does an applicant’s representative perform an effective job interview?

The Goal

Interviews can be a potent device to shorten prosecution. This is because it provides the applicant a distinctive insight into how the examiner thinks about their scenario even though also allowing for the applicant to express crucial data to the examiner that might be missing or missed all through the system of prosecution.

When and How to Interview

Interviews can be handy at any stage of prosecution as prolonged as it can take care of issues and support even further prosecution. Interviews need to be held ahead of prosecution reaches a sticking issue. The ideal time to schedule an job interview is usually after the initial office environment motion on the deserves. In the earlier, interviews had been often held in particular person on the USPTO campus in Alexandria, VA. Right now, even so, movie conferencing is the most simple way to link with the examiners, considering that most examiners do the job remotely.

The Effective Job interview

The examiner has a finite sum of time they can invest on a solitary scenario. USPTO examiners are only given 1 hour for the complete interview course of action, including preparing before the job interview and composing the job interview summary afterwards. That is why it is incredibly essential to perform an effective job interview in as minor time as is vital. The excellent interview lasts no far more than 30 minutes. To help the examiner, the applicant or their consultant ought to post an agenda and any proposed declare amendments at minimum 24 several hours prior to the job interview. In addition to facilitating preparation, distributing an agenda can give the examiner time to identify how to approach a favorable final result dependent on the proposed technique proffered by the applicant. Just after introductions, the true interview need to be shorter and sweet. Both the examiner and applicant will publish up a in-depth summary following the job interview is about, together with irrespective of whether an agreement was achieved.

The Compound of the Interview

After the initially business office motion, the examiner will generally know what the closest prior artwork is and what it requires to triumph over the rejections. Applicant should really handle just about every difficulty and question if the proposed reaction would probable triumph over the respective objection(s) or rejection(s). Having said that, interviews are not a fishing expedition, and the examiner cannot deliver legal information. Thus, it is up to the applicant to suggest their approach. The practitioner will will need to notify the examiner what they assume and request the examiner if which is some thing that will advance prosecution and aid access a mutually helpful result. I propose providing the examiner different technique selections (e.g., diverse proposed assert amendments). This presents the examiner an option to ascertain which solution would probable operate best. Of class, it also goes without saying that becoming courteous and respectful to the examiner, especially when disagreements inevitably occur, is very important to sustaining a good marriage and achieving a favorable result. Keep in mind that this examiner will probably see each youngster or sister patent software associated to the creation. Obtaining on the examiner’s great aspect early will fork out dividends afterwards.

A single Compared to Two Examiners and Why it Issues

When a USPTO patent application is examined, the Business office concerns a person or extra office environment steps that are both signed by a single examiner or a next examiner with authority to indicator. My working experience as a previous Key Examiner gave me a special perception into what this signatory distinction suggests and why it impacts patent prosecution tactic.

Signatory Authority

Not all patent examiners are equal. A USPTO examiner that lacks partial or complete signatory authority (generally GS-7 to GS-13) is usually referred to as a “junior” or “assistant” examiner. Just after numerous several years of promotions, the certification test (the USPTO equivalent of the patent bar), and a signatory application the place supervisors scrutinize a plethora business office actions more than a probationary period of time, an examiner attains the rank of Principal Examiner (GS-14/GS-15) and the authority to signal most business office steps. A Supervisory Patent Examiner (“SPE”) is a previous Primary Examiner that also has signatory authority along with other managerial obligations. SPEs and Primaries approve and indication place of work steps of junior examiners. The inherent signatory authority of an examiner immediately impacts conclusion-producing for pinpointing the finality of an software and what can be agreed to in the course of an interview.

Incentives to Reject or Enable

The signatory authority of an examiner may well incentivize rejecting statements rather than letting. Particularly, junior examiners have a increased incentive to reject patent statements and stay clear of indicating any allowable issue issue. The motive for this is because a junior examiner has the capability to reject patent claims at any stage in the course of prosecution, but the willpower of allowable issue subject cannot manifest with no acceptance from a Major or SPE. As a result, a Primary or SPE is a lot more possible to accept signing a rejection because that is simpler than conferring with the junior examiner for identifying allowability. This is particularly the case when the junior examiner is below a time crunch to get a situation off their docket. Also, examiners that have partial signatory authority (“PSA” examiners) have a inspiration to reject scenarios that are non-remaining given that they do not have to have a Key or SPE to indication any non-ultimate workplace steps. In contrast, an allowance is an business office motion that is final and, therefore, the PSA examiner does have to have a Most important or SPE to critique and sign.

As an example of this phenomenon, in my very first a few several years at the USPTO as a junior examiner, I rarely experienced a circumstance the place an allowance was issued in the first office action, and I rejected promises much more usually than when I became a Main Examiner. As a Key Examiner, I could routinely make it possible for conditions previously and generally, these types of as by proactively positioning a contact to the applicant’s agent to make recommended changes or by issuing an Examiner’s Amendment.

On the other hand, a junior examiner does not have these resources at their disposal and, relying on the quality level, they may possibly not even have authority to perform an interview without having a Major or SPE existing. In theory, it really should not make a distinction. In actuality, nonetheless, junior examiners may well not be on the similar wavelength as their Primary or SPE and issuing rejections is safer and less complicated to get place of work actions out the doorway, even if the grounds of rejection are weak.

Prosecution System Primarily based on Signatory Authority

Every examiner is distinctive, and figuring out the signatory authority of an examiner may well have an affect on prosecution system for the applicant.

It is vital to remember that a Primary Examiner is the special authority until eventually a situation is appealed. Contacting upon a SPE for support or requesting their existence in an interview when a Principal Examiner is the sole person analyzing a scenario is not only unhelpful but also threats anger and resentment from equally the Key and the SPE. A SPE may perhaps immediately presume the lawyer is hoping to subvert the Key Examiner’s authority. Demanding a Key Examiner’s authority to make decisions defeats the complete place of the decades and hard work to attain that title and rank.

On the other hand, requesting a Most important Examiner or a SPE when a junior examiner is getting interviewed can be valuable since allowable issue make any difference are unable to be determined with out their acceptance. Furthermore, a SPE or Main Examiner commonly has extra experience that can aid final decision earning.

The examiner’s signatory authority may well have an effect on the technique to present declare modification(s) or arguments. For case in point, Major Examiners may perhaps reveal how to triumph over a rejection in an office motion by suggesting a declare amendment. A junior examiner is much less possible to reveal what could prevail over the rejection. In addition, a junior examiner may possibly have a higher likelihood of rejecting promises that are amended, which could not be worthwhile in the to start with place if the grounds of the rejection are weak.

At last, the examiner’s signatory authority could also affect the determination as to whether to enchantment or continue prosecution. For illustration, figuring out the proclivity of a junior examiner to reject statements provides body weight to attractive a scenario that is ripe somewhat than submitting a request for ongoing evaluation.

Every single USPTO business motion offers a person or additional difficulties that need to have to be resolved when formulating a response. As a result, figuring out the importance of an examiner’s signatory authority can be valuable when addressing individuals concerns.

The Aim: A Roadmap to Allowance

If the applicant or their agent sees at the very least some reward, conducting an successful job interview can expedite prosecution and limit fees. Accomplished correctly, the job interview must offer the applicant further more perception into how the examiner thinks and a clearer roadmap for receiving the statements allowed.


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