[author: Courtenay C. Brinckerhoff]
Although I am used to seeing patent litigation stories in The Washington Post, I was surprised when Sunday’s business section included an article on examiner interviews. Over the past few years, examiner interviews have become a more and more significant part of my patent practice. In a complex case, they can offer an invaluable opportunity to discuss the state of the art, explain the technology of the invention, or even review a specific point of patent law. While interviews do not always result in an agreement as to patentable subject matter, they do always advance prosecution–at the very least we come away with a better understanding of the examiner’s concerns and an indication of how we might be able to move forward.
The Personal Touch
The Washington Post article tells of an inventor (Dr. Herr) who met with the examiner who had rejected all of his patent claims over the prior art. According to the article, the inventor was able to explain the significance of the invention to the examiner, obtain a broad patent, and attract investors for his company. (You can read more about Dr. Herr’s SpermCheck® products and related technology here.)
As I read the article, I was particularly struck by this quote:
“Had I not visited the patent office in person,” Herr said, “the discussion on prior art, novelty and utility might not have evolved as it did, and the four essential patent claims that eventually issued, and upon which the company was founded, might not have emerged.”
I almost always prefer in-person interviews over telephone interviews for similar reasons. I find that the conversation flows more freely when we meet face-to-face, and it is easier to ensure that we are making our points clearly when we can read facial expressions and other body language. Sitting in an examiner’s office or USPTO conference room, we can pore over the same documents, review the same figures, and, hopefully, come to the same conclusion on patentability.
The Video Conference Compromise
With the rise of examiner “hoteling” (telecommuting) it is getting more difficult to arrange in-person interviews. In response, the USPTO is beginning to offer interviews by video conference. While that may be a good compromise, I am afraid that it will be a compromise. As much as I embrace technology, even the smoothest electronic connection cannot substitute for the professional rapport that can be established in a face-to-face meeting. I hope the USPTO appreciates the advantages of in-person interviews, and considers using its new satellite offices as alternative sites for in-person examiner interviews across the country.