USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution

This CLE course will guide patent counsel on leveraging interviews with the United States Patent and Trademark Office (USPTO) patent examiners to prosecute patents more efficiently. The panel will provide insight into conducting the interviews and offer strategies for interacting with patent examiners.

Patent examiners initially reject a large percentage of patent applications. Conducting an interview with the patent examiner handling the patent application is one of the most efficient ways to advance the application. Having a dialogue with the examiner minimizes the back-and-forth between the examiner and patent counsel. Perhaps more importantly, the substance of the interview is only recorded in an Examiner Interview Summary.

Counsel must understand that the interview should not be a fishing expedition. Counsel should come in prepared, having reviewed the case, and be ready to state its argument with multiple fallback positions. The examiners generally ask for an agenda with proposed claim amendments. Interviews also provide an opportunity to understand the examiner's position on an office action.

While interviewing the patent examiner can move the patent application's prosecution forward, if patent counsel is not prepared or makes damaging admissions, it can be a disaster. Patent counsel must understand when and how to interview patent examiners to prosecute patents effectively.

Listen as our authoritative panel of patent attorneys offers guidance for patent examiner interviews to advance patent prosecution. The panel will discuss the USPTO policy on interviews and provide insights to work within the system, including strategies for preparing for and interacting with examiners. The panel will offer guidance for conducting and leveraging examiner interviews.