Why We Interview Patent Examiners

I'm Rich Beem. I'd like to talk with you about interviewing the patent examiner. We start out, of course, by filing the patent application. After a period of time the examiner will conduct a search and they will look at all the prior art that we submit. And they will issue an office action. Often the first office action is a rejection of the claims. The examiner, as we interpret it, basically says, "I don't fully understand your invention. Will you explain to me further what is new about it? Explain to me why it isn't obvious. Explain to me, the examiner, why I should allow your patent to issue."

So what we do in that circumstance is we prepare a written response. We prepare written arguments. We often amend the claims because the examiner says your claims are too broad. These claims cover or read on the prior art.

So what we do is we go back to the patent application, which we have written up in great detail to begin with anticipating this possibility, but not knowing what we might need to pull out of the patent application to explain what's different about your invention. And we add that into the claims. But we don't stop with just putting it in writing. Usually, before we file it we call the examiner. We can also schedule these with a written request, but usually a phone call suffices and we have the examiner's personal phone number.

There are 6,000 examiners in the United States Patent and Trademark Office. They're very busy people. They handle hundreds of thousands of patent applications every year, and your application just one of those that they look at. And they don't have a lot of time to study it. So we help them to understand it even better because we have spent more time with you, and we have studied your invention very closely. We've written up the application. We've written the claims.

So when we interview the examiner, we say we're proposed to amend the claims in this way, and we would propose to submit these written arguments. We might submit additional evidence by way of declaration, and we prepare those kinds of declarations. We know how to put them together.

We can conduct the interview in person. Sometimes we actually go to the patent office in Arlington, Virginia. They have very nice facilities and we meet with the examiner. I have at some times taken the inventor with me to help demonstrate the invention. But more often we conduct these interviews by telephone. And the reason why is because the examiners often prefer it. Many of the examiners telecommute. They're working from home. And they are working. They have very high productivity standards, but it can be easier for them to schedule and they don't actually have to come into the office. They can conduct this interview by telephone at home.

Now why do I mention this to you? It's because when you have an invention and you want to get a patent on it, it is usually worthwhile after writing up and filing a good, solid, detailed patent application that when we get the office action we conduct the interview with the examiner to help negotiate the allowance of the patent, to help answer any questions that the examiner may have. If you have an invention and you would like to have your patent application filed, and have someone ready to interview your case for you, call us. I'm at 312-201-0011. Thank you for joining me.