Whist everyone wants patents issued quickly, patent prosecution in the U.S. can be daunting. A non-final rejection followed by a final rejection and then again. In response, IP owners narrow the claim and then narrow them more and more, until the resulting patent has almost no scope left.
Sounds familiar?
It happens to everyone. Even to us. However, unless you are exceptionally unlucky, it shouldn’t happen at all. We are famous for getting our clients’ patents issued rapidly. We are the U.S. advisor of choice for dozens of foreign firms because we stay away from this loop in the overwhelming majority of our cases.
Our number one secret? Interviews. Well, properly conducted interviews.
Interviews are the most important tool in the top prosecutor toolbox. Written responses are essentially firing a machine gun in the dark hoping to hit something. Interviews if you like, are a sniper rifle. They allow us to engage productively with examiners, argue the points where we disagree and get instant feedback and most importantly, identify points where we and the examiner do agree. When the examiner receives a response, their primary mindset is normally “how do I reject all the claims?”. In an interview their mindset is “what can I allow?”.
This dramatic, fundamental, difference, justifies using interviews not as a rare wall-cracker fall-back position for prosecution. Interviews should be used in almost each case and almost any rejection. They are a prime prosecution strategy. Using interviews all the time has allowed us to beat the odds with overwhelming allowance rates.
Of course, just speaking with the examiner is not enough. One needs to know how to do it productively. The best case scenario is run onto an examiner that you already know. Since we do so many interviews, it happens to us quite a lot despite the thousands of examiners in the patent office. We like to start interviews with a polite informal exchange. Make ourselves likable. During the interview, we first focus on the points where we agree. Trying to get a “small yes”. We then move to points where we disagree. We ask the examiner to make suggestions of what would be acceptable. We then ask examiner about the next step and what they expect to happen. We use interviews as a way to pick up intelligence. These strategies are extremely informative. Many practitioners are afraid of interviews and feel awkward and uncomfortable. It is important to show up to an interview with charm and confidence, and with a razor sharp understanding of the case.
Another important point is that we are very positive about clients/foreign associates attending interviews. Whilst this has little or no outcome on the case normally, it does allow IP owners to gain incredible insights to the way that the examiner approaches their cases.
We like to look at the examiners’ statistical profile ahead of interviews. Whilst no case is the same, analyzing what examiners have done in the past and how interviews impacted their willingness to allow cases is helpful.
For more information, watch our webinar on interviews that we previously ran for clients and start getting patents issued quicker. We hope you enjoy it!
