Examiner Interviews – A boon

Author: Carmel Irudayanathan

Companies are finding it hard to keep their dreams of patent processing afloat as it being a very expensive and time consuming process. Many restrict their funds to prosecute the patent applications while others abandon their dreams of patenting their product or software. Businesses are finding new strategies to cut cost and manage their patent prosecution process effectively. There are different ways to reduce the cost associated at different stages of the patent processing cycle - research, documentation, Interview and correspondence: 1) Drafting the patent application clearly for the examiner to understand the product clearly, 2) preparing a checklist of possible questions that would be raised by the examiner, 3) conducting examiner interviews and 4) filing thorough responses to office actions. These would considerably reduce the time and cost involved in the long term.

Businesses should provide enough time for attorneys to draft the patent application clearly. This would help the examiners to understand the product easily without any confusion. This would considerably reduce the time that the examiner spends on the application and in return reduces the time and money spent by the applicant. Reduction in the cost and time consumption in the examination process is directly proportional to the success of the business.

Examination process can stretch for many years and thereby burdening companies. But it's well within the applicant's purview to accelerate the examination process. Examiner interview is an opportunity for the applicant to meet the examiner to discuss the patent application even before the first action. To arrange an interview meeting with the examiner, the application needs to meet the basic criteria:

1. the application must be a non-reissue, non-provisional utility application or an international application that has entered a national stage
2. the application shouldn't have more than three independent claims and twenty claims in total.
3. the claims must be directed to a single invention;

The applicant needs to file a request for an interview before the examiner files an office action. By doing so the applicant will be able to explain the invention face to face and clarify the queries that the examiner would rise unlike responding to the Office actions aftermath. Applicants can solve patentability issues by providing evidence of the claims in view to that of the prior art.

On receiving the electronic request from the applicant and if the application meets the criteria, the examiner would conduct a prior art search and prepare a pre-interview communication. The communication would list prior art references and reasons for rejections or objections. This gives the applicant an opportunity to counter the arguments and educate the examiner about the invention merits and how it is different from that of the prior art. Attorneys generally prepare a checklist of possible questions well in advance that could be raised by the examiner during the interview meeting apart from the ones mentioned in the communication.

At the interview, the applicant can describe how his invention is different from that of the prior art and help the examiner to understand the invention better to have the examiner prepare the first action. The examination interview program has considerably helped both the examiners and the applicants in reducing the time spent on office actions and its responses. The outcome has improved steadily as the rejection level as come down compared to that without a pre-examination interview. An applicant is three times likely to be granted the first action allowance of the patent application. It reduces the time taken to prosecute a patent from the first action to the issuance of the patent.

Interviews can be arranged to respond to the office action and businesses should spend more time to prepare a thorough response that addresses each and every rejection in the Office Action. The interview helps to clear the air of misunderstanding and helps them to understand the position of the other and explore solutions to resolve their difference. Interviews can be arranged by the applicant each time on receiving an office action if issues remain unsolved.

The applicant should ensure to schedule an interview with the examiner as soon as he receives an office action. The examiner's mind would be afresh with the claims and prior art and the applicant needn't take the pain to repeat their earlier encounter. The attorney would review the examiners arguments and cited prior art to prepare short summaries of the invention, the questionable prior art and highlight their differences. The summary should be concise as examiners have less time to prepare for each interview. The applicant can submit their proposed amendments and explanations which are precise, with each amendment not lengthier than a page and half to the examiner to schedule a meeting. Or else file a request not to have the first action interview with the examiner if the applicant feels that his claims would be rejected.

The applicant can prepare the case with more evidence and have another interview meeting arranged to clarify the doubts raised during the interview meeting. The amendments and explanations could provide most of the answers to the queries raised in the interview meeting. The applicant can clear out any further queries during the interview with the examiner on how the invention is different from that of the prior art. A solution would be arrived by both the examiner and the applicant to win allowance for the application. If the queries are unsolved even after the meeting a follow-up interview can be arranged to solve the differences.

Patentability issues are resolved during one-on-one meeting with the examiner at the beginning of the patent prosecution process itself rather wait for years to learn of the differences. The process can be expedited from the applicant's side by taking a few simple steps like drafting a complete patent application, determining if the Office Action is complete, filing thorough Responses and conducting Examiner Interviews and thereby reducing the cost and time involved. Examiner's interview is a boon to both applicants and examiners as it simplifies the process, minimizes unnecessary office actions and responses and allows speedy patenting of the invention and thereby yielding greater returns.

Article Source: http://www.articlesbase.com/patents-articles/examiner-interviews-a-boon-4837299.html

About the Author

Carmel Irudayanathan is an editor for the law firm of Kunzler Needham Massey & Thorpe. Learn more about patent examiner interview at kunzlerip.com.