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June 5, 2008

Interview First

The USPTO has a pilot program for select art units, offering applicants the opportunity for an interview prior to first office action. Of course, a prosecutor could always voluntarily do the same. While pre-action interview may be "in the interest of compact prosecution," under the current USPTO regime, it is more a formula for vexation.

Under the present regimen of no-first-allowance, a pre-action interview educates an examiner to improve his non-final rejection. In absence of an interview, the typical lazy examiner gives a dumb first office action. Amend accordingly and get ready for appeal after the final rejection. Hell, you were going to appeal anyway. You just made it easier on yourself, without bothering with a pesky interview.

In recent years, examiners have called for a pre-action interview. Those examiners were just fishing to catch a clue on the cheap. They have never resulted in improved examination. My absolute stupidest rejection ever was from an examiner who called before showing how low he could go.

The only successful interviews have fallen into categories at the extremes of examination: dismal and spitting distance. Dismal means a rejection so bad to arrange an interview with the examiner and his/her SPE (supervisor), and explain to the SPE how imbecilic the rejection was. This has worked. While the examiner could have easily been mistaken for a mule, the SPE listened. At the other extreme, if it appears a grant may be at hand with a bit of tweaking or rhetoric, in other words, within spitting distance, a friendly chat with the examiner may ease allowance.

Posted by Patent Hawk at June 5, 2008 12:53 AM | Prosecution


I would add "clarification" to the list. Sometimes the Examiner just hasn't articulated how the art is being applied to the claims.

Also, in my experience, the helpfulness of the interview varies according to how well the Examiner knows the art. I had one Examiner who had his own folders set up of art on various topics. When I proposed an amendment in the interview, he was able to pull out a folder and a piece of art and back up his arguments. After a little discussion, we arrived at an amendment and the case was allowed on the next action. In this case, the interview was very helpful. But, that has only happened one time in many years of prosecuting.

Posted by: anon at June 5, 2008 5:17 PM