The Importance and Benefits of Applicant-Initiated Interviews During the Patent Application Process

Navigating the patent application process can be a complex and time-consuming endeavor. One crucial yet underutilized tool that applicants have at their disposal is the applicant-initiated interview with a patent examiner. Understanding the importance and benefits of these interviews can be instrumental in strengthening your application, improving the chances of approval, and expediting the process.

• What Is an Applicant-Initiated Interview?

An applicant-initiated interview is a formal meeting, either virtual or in person, between a patent applicant (or their attorney) and the assigned patent examiner at the U.S. Patent and Trademark Office (USPTO). The primary purpose of these interviews is to clarify aspects of the application, address objections or rejections raised in an Office Action, and explore potential paths to resolve outstanding issues.

Interviews are typically scheduled after the examiner has reviewed the application and issued a first Office Action. These meetings provide a collaborative opportunity to engage directly with the decision-maker, which can be highly advantageous in understanding and overcoming legal or technical concerns. Under USPTO rules, the applicant is allowed at least one interview before a final office action is issued.

• What Are the Benefits of An Applicant-Initiated Interview?

An Applicant Initiated Interview has several benefits. These benefits include the following:

•  Clarifying Examiner Concerns

Written Office Actions may not always convey the examiner’s reasoning clearly. Applicant-initiated interviews offer an opportunity to seek direct clarification of the examiner’s objections or requirements. This dialogue can prevent misunderstandings that might otherwise prolong the application process.

• Reducing the Number of Office Actions

Patent applications often face multiple rounds of examination and amendments. Interviews can reduce this back-and-forth by allowing both parties to discuss amendments or claim adjustments in real-time. This proactive communication can streamline the examination process, potentially resulting in fewer Office Actions and a faster path to patent issuance.

• Enhancing the Applicant’s Strategy

By gaining insight into the examiner’s thought process, applicants can develop a more strategic response. For example, applicants may choose to amend claims in a way that preserves the core invention while addressing the examiner’s objections. Additionally, the interview may reveal opportunities to present persuasive arguments or evidence that the examiner may have missed when he or she drafted the office action.

One of the most critical steps applicants can take to prepare for an interview is proposing an amended claim that could overcome the patent examiner’s rejections.

An amended claim should address the examiner’s concerns, whether related to prior art or claim clarity, while preserving the core invention. Having this proposal ready in advance enables applicants to present a concrete solution that can be discussed and potentially agreed upon during the interview.

Also, a proposed amended claim allows the applicant to get an examiner’s feedback before filing the amended claim in a response to an office action.  Examiner feedback can be very helpful to shorten the back and forth during the examination process.

• Building a Collaborative Relationship with the Examiner

While the patent application process is inherently adversarial to some extent, fostering a professional and respectful rapport with the examiner is very important. In my opinion, an examiner may be more likely to side with an applicant’s position if applicant’s counsel has a good rapport with the examiner.  Stated differently, in my opinion, in cases where the examiner is on the fence about applicant’s position, it is probably easy for an examiner to side with an applicant’s position if the examiner likes the applicant’s or applicant’s representative, which is why building rapport with the patent examiner through applicant-initiated interview is so important.

• Increasing the Likelihood of a Successful Outcome

Applicant-initiated interviews can improve the chances of a favorable outcome. When both sides fully understand the concerns that need to be addressed, the likelihood of reaching an agreement on claim language and scope increases. This can save significant time and resources by reducing the need for appeals or requests for continued examination (RCE).

• What are Best Practices for Conducting an Applicant-Initiated Interview?

To maximize the benefits of an interview, applicants should come prepared with a clear agenda and supporting materials. An applicant’s representative should consider doing the following:

1. Try to establish a rapport with the examiner and be professional and friendly. Ask about the weather, where he or she is located, how her or his day is going, or anything that may be helpful in creating some type of good rapport with the patent examiner. You should do some research beforehand that could be helpful in establishing rapport.

• Prepare alternative claim language or proposed amendments that could resolve the examiner’s concerns. This is very important in order to get useful information and feedback from the patent examiner.

3. Identify specific issues to address, such as particular claim rejections or prior art references. I include a bullet point list of why the examiner’s cited prior art is not application or why the proposed amended claims overcome the examiner’s rejections. This is another way an applicant can get feedback, which is very helpful for the examination process. 
4. Anticipate examiner questions and be ready to provide technical explanations or legal arguments as needed.
5. Be flexible and be ready to allow the examiner to deviate from the agenda if it will help and expedite the examination process. Near the beginning of the interview, I typically ask the examiner during the interview how he or she would like to proceed. Doing that will allow the examiner to get right to the point and make suggestions that could benefit prosecution. Applicants should also remain professional and flexible during the discussion. An open-minded approach can lead to creative solutions that may not have been apparent from the initial exchange of written communications.

• How to Schedule an Interview with a USPTO Examiner

The USPTO offers an Automated Interview Request (AIR) system to streamline the scheduling of applicant-initiated interviews. Applicants or their representatives can use this system to submit an online request for an interview with the assigned examiner. The form allows users to specify the preferred date, time, and format of the interview (e.g., phone, video conference, or in person). In certain cases, a video conference may be preferred so that you can share your screen to discuss prior art or proposed claim amendments.

To schedule an interview, visit the USPTO’s Automated Interview Request page at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.  Alternatively, the applicant’s representative can email or call the examiner to schedule an interview.

• Conclusion

Applicant-initiated interviews are a powerful tool that can significantly enhance the patent application process. By facilitating direct communication with examiners, these meetings allow applicants to clarify concerns, reduce delays, and develop more effective strategies. For those seeking to improve their chances of securing patent protection, scheduling and preparing for an interview can be a valuable step toward achieving a successful outcome. Click HERE to learn more about Derek Fahey, the author of this article.