Telephone And In-Person Interviews

The MPEP provides for telephone and in-person interviews with examiners, at the option of the examiner. Although such interviews are almost always helpful in pushing the case forward, some examiners are reluctant to grant interviews. Perhaps they find interviews to be too time consuming, and perhaps they find it unpleasant to talk with pushy patent attorneys. In the past examiners refused to conduct interviews before the first office action, but that tactic is no longer valid . Whatever the reason, it behooves patent attorneys to try to overcome the examiner's reluctance, and utilize interviews early on in the prosecution. A telephone interview even after the first office action is often both indicated and very useful.

In-person interviews are another story. Most of the examiners are quite reluctant to grant in-person interviews, and that reluctance is understandable. In-person interviews tend to require an inordinate amount of time for preparation, and depending on the location of the inventor and patent attorney, for travel time as well. Moreover, almost anything that can be discussed during an in-person interview can be discussed just as well during a telephone interview. The real benefit of an in-person interview is where repeated written exchanges and telephone interviews have brought to prosecution to an impasse. But in that circumstance, the better strategy may be to file an appeal.

There is another viable reason for speaking to an examiner in person; namely to build a working relationship. After all, examiners are people, and they may well enjoy getting to meet someone face to face after having spoken numerous times over the phone.

There is also a third reason for in-person interviews, and that is to show the examiner a working model or other specific embodiment of the invention. This sometimes helps the examiner appreciate the novelty of the invention in the field, and may well lead to allowance of broad claims.

Surprisingly, many of the examiners seem to think that there is no provision in the PCT statute sanctioning interviews. As such, many of the examiners are even more reluctant than normal to grant telephone interviews for their PCT cases, and they flatly refuse to grant in-person interviews. That refusal is quite odd, given that a PCT examiner will often receive a corresponding U.S. case with the same claims a few months down the road, and will be happy to grant a telephone interview in that U.S. case. Even where the claims are different, my experience is that the examiner is often willing to discuss the PCT claims during a conversation on the U.S. claims. In any event, the MPEP section on PCT Art. 34 does authorize PCT examiners to conduct interviews, provided the written opinion has already issued:

The examiner or applicant may, during the time limit for reply to the Written Opinion, request a telephone or personal interview. Only one interview is a matter of right, whether by telephone or in person. Additional interviews may be authorized by the examiner in a particular international application where such additional interview may be helpful to advance the international preliminary examination procedure.

Regardless of when and what type of interview the attorney seeks, he often has to deal with the issue of whether to include the inventor on the interview. My preference is to either leave the inventor off the call altogether (assuming it is telephone interview), or have them stay mostly silent during the call. Much of the discussion usually centers around technical patent issues, and the inventor's lack of expertise in that arena can easily frustrate the examiner. Major exceptions are where the inventor is famous, and where the inventor is particularly eloquent. In both of those instances the examiner will likely enjoy talking with the inventor.

I have had mixed results in raising personal issues with the examiners. What seems to me to be a compelling story of the inventor's hardship has more often than not turned into a hard sell to the examiner. They have their workload, and they typically go about that workload in a professional manner, taking the cases in their proper order. One should tread lightly over that ground.