Often, a face-to-face discussion can help two parties resolve a sticky dispute. In patent prosecution, the patent applicant can request to sit down interview with an examiner to discuss the examiner's rejections. See 37 CFR 1.133. The interview can be face-to-face or via telephone or even video conference. Law firms located across the street from the PTO tend to tout the value of examiner interviews while those outside of DC tend to downplay their significance.
I recently created a database of about 17,000 patent applications filed 2000–2005. For each of those applications, I also have a listing of the prosecution history that indicates the timing of any examiner interview. I used this data to consider the effectiveness of examiner interviews. Note two important caveats: I did not look at the underlying documents in the file wrapper, and my data does not distinguish between interviews in person and those done at a distance.
The results: Overall 18% of applications were associated with an examiner interview. I broke the data into two groups.
Early Interviews: In what I call the "early interview" group are applications where the examiner interview took place prior to the mailing of any final office action. Applications in the early interview group had the same grant rate as those that did not have an early interview (70% grant rate of terminated cases). However, those with an interview tended to stay pending longer, and be more likely to have an RCE in the file history.
Late Interviews: In what I call the "late interview" group are applications where an examiner interview took place after a final office action was mailed. Applications in the late interview group had a much higher grant rate than did applications where a final action was mailed but the case was not subsequently interviewed. Here, 74% of those in the late interview group were allowed as compared with only 60% other applications where a final action was mailed. (+/– 3% at 95% CI).
Interviews by Organization: The table below looks at the top twenty filing organizations (as listed in the application correspondence) in my dataset based on the number of applications filed 2000-2005. For each organization, the table lists the number of applications that were interviewed, number of issued patents, percent of cases interviewed, and the percent of cases patented. (Note, this percent of patented cases includes still pending cases in the calculation instead of only terminated cases and is consequently lower than the rates reported above). Although these are organizations who filed the most applications, readers should note that they represent less than 20% of all filed patent applications.
|
Organization |
Number of Applications in Database |
Applications with Interviews |
Number of Issued Patents |
Percent of Cases Interviewed |
Percent of Cases Patented |
|
OBLON SPIVAK |
374 |
107 |
241 |
29% |
64% |
|
SUGHRUE MION |
248 |
35 |
150 |
14% |
60% |
|
BIRCH STEWART |
210 |
46 |
138 |
22% |
66% |
|
HEWLETT PACKARD |
190 |
26 |
91 |
14% |
48% |
|
OLIFF BERRIDGE |
172 |
60 |
124 |
35% |
72% |
|
Harness Dickey |
171 |
37 |
92 |
22% |
54% |
|
FOLEY LARDNER |
153 |
25 |
93 |
16% |
61% |
|
KNOBBE MARTENS |
138 |
27 |
73 |
20% |
53% |
|
NIXON VANDERHYE |
138 |
21 |
82 |
15% |
59% |
|
FISH RICHARDSON |
136 |
30 |
74 |
22% |
54% |
|
FINNEGAN HENDERSON |
129 |
18 |
68 |
14% |
53% |
|
MCDERMOTT |
119 |
14 |
80 |
12% |
67% |
|
Blakely Sokoloff |
115 |
15 |
65 |
13% |
57% |
|
STAAS HALSEY |
109 |
21 |
60 |
19% |
55% |
|
FITZPATRICK CELLA |
108 |
19 |
74 |
18% |
69% |
|
TOWNSEND |
108 |
22 |
65 |
20% |
60% |
|
ANTONELLI TERRY |
101 |
12 |
68 |
12% |
67% |
|
PHILIPS IP |
93 |
9 |
54 |
10% |
58% |
|
YOUNG THOMPSON |
92 |
12 |
50 |
13% |
54% |
|
WENDEROTH LIND PONACK |
91 |
22 |
57 |
24% |
63% |
I belong to a firm with an 88% issue rate. Does that mean that interviewing more could actually lower our rate? 🙂
don’t bother said: “But have you ever been in an interview with Malcolm Mooney of the PTO? ”
It would be an easy interview. Malcolm would be arguing that the claims are unpatentable, even those that were previously allowed.
“Did a former high level PTO official attend? Did he/she try to bamboozle you with, gasp, a PowerPoint presentation? Did he/she take out a shiny pocket watch on the end of chain and try to hypmotize you wit’ it?”
It is more effective to use Kreskin! PTO people are not trained to use advanced hypnotizing techniques.
Auditions for the theater troupe known as the Puppetly-O Train Wreck are ongoing.
What is may lack in substance, it more than makes up in entertainment.
I said it before and I’ll say it again, Mooney (and “whoever” is behind the Mooney persona) is a drama queen in desperate search for drama in the patent realm. Sorry to disappoint, but the fact is, patent work is generally devoid of drama (thats why I like it).
If you want drama, join a theater troupe.
“Mooney, you’re going to have to use a little more imagination”
Please don’t.
Joe Jackson (Mooney, you’re going to have to use a little more imagination)
You insist that notices of allowances can magically appear. I would love to hear from a PTO person as to what they think about what would happen if there was an outstanding office action, say, a final rejection and, with no response from the applicant in the file and no further papers, a notice of allowance “magically” issued.
Correct me if I’m wrong, but I don’t think PALM would even allow that.
As for the 7 hour interview, I don’t know many, if any, Examiners that would allow such a thing. I can see an Interview taking on the character of an oral hearing before the BPAI with slides and the like. However, oral hearings are limited to 20 minutes. I have never had an Examiner Interview go beyond an hour.
My suggestion to Joe Jackson/Mooney/Puppeteer, get a life.
“I’m an examiner, never had a 7 hour interview, never heard of anyone having a 7 hour interview…”
Okay. But have you ever been in an interview with Malcolm Mooney of the PTO? I hear the dynamic is interesting, to say the least.
I’m an examiner, never had a 7 hour interview, never heard of anyone having a 7 hour interview, can’t imagine any SPE or primary acquiescing to a 7 hour interview. I mean, would you break for lunch, and then interview some more? Would the applicant sleep over for an examination slumber party? I have no idea what could possibly take 7 hours to demonstrate to the examiner. Is the applicant going to machine his widget from scratch before the examiner’s eyes? If you have to rely on examiner sleep deprivation as a tactic to get a claim allowed, you’re truly a crappy attorney.
“Have any of you ever been involved in such an interview? The dynamic is interesting, to say the least.”
Have you, Mooney? If you were, then there’s only two possibilities how that could have happened: 1) You work at one of these firms that prides itself on hiring former high level PTO personnel and attended the interview with that former high level PTO employee (which I’m sure was just an absolute affront to your loudly and self-proclaimed professionalism, but you soldiered on for the benefit of the client); or 2) you work at the PTO.
My guess is 2).
I knew you weren’t a practitioner.
“If I was a prosecuting attorney, I’d profile the examiner prior to the interview.”
That’s funny. Your Office Action pretty much says everything I need to know about you. What am I going to learn by “profiling” you that I haven’t already learned by suffering through your poor grammar, horrible spelling, and malapropisms?
“You must be one of those “cosmopolitan” examiners. You know the ones I mean? The ones who never saw a girl all through college, so they take a job where they won’t see any throughout their career.”
That’s the fate of too many engineers. However, I have to say, as far as engineering jobs go this one is loaded with womenz. Loaded. It is one of the two main reasons I don’t want to go to industry. The other one is cubicles.
“Yeah, I’m gonna ramble on with non-related technical terms (focus on technical rather than legal) to confuse you.”
I’m sure the rambling incoherence of your Office Action has already created a significant amount of confusion.
“All are engineers (80%+ male) and most are straight out of college (21-30yrs old). I’d bring two amazingly hot 25yr old female law students with me in mini skirts.”
LOL
You must be one of those “cosmopolitan” examiners. You know the ones I mean? The ones who never saw a girl all through college, so they take a job where they won’t see any throughout their career.
MM: “There are prosecution histories at PTO which include descriptions, less than a paragraph in length, of PowerPoint “presentations” to an Examiner, where multiple attorneys, inventors and experts were present. God knows what went on.”
If I was a prosecuting attorney, I’d profile the examiner prior to the interview. I do it with attorneys prior to interviews (nice pic on your firms websites, btw). You’re an attorney with a mechE degree arguing a compE case? Yeah, I’m gonna ramble on with non-related technical terms (focus on technical rather than legal) to confuse you.
Let’s see… Thousands of brand new examiners just hired. All are engineers (80%+ male) and most are straight out of college (21-30yrs old). I’d bring two amazingly hot 25yr old female law students with me in mini skirts.
Then I might be interested in a 7 hour bamboozlement.
“I haven’t had a 7 hr long one, but I did have an hour long one a few times. Multiple art issues, a technical issue or two, a 112, that sort of thing.”
Did a former high level PTO official attend? Did he/she try to bamboozle you with, gasp, a PowerPoint presentation? Did he/she take out a shiny pocket watch on the end of chain and try to hypmotize you wit’ it?
LOL
“I would love to hear from the examiners how “often” one of their interviews goes on for seven hours.”
I haven’t had a 7 hr long one, but I did have an hour long one a few times. Multiple art issues, a technical issue or two, a 112, that sort of thing.
BTW, nice straw man, Mooney. I was busting Joe Jackson’s chops over the ridiculous assertion that interveiws “often” go on for “seven hours or more” and you come back with PowerPoint presentations, experts, former high level PTO officials, blah, blah, blah.
“And it’s also true and worth noting that some firms pride themselves on their employment of former high level PTO personnel because of their perceived ‘credibility’ and ‘authority’ during Examiner interviews. Have any of you ever been involved in such an interview? The dynamic is interesting, to say the least.”
Please also post some serial numbers of applications where these former high level PTO personnel were present during an interview.
Thank you.
He knows it in the same way that every German patent attoreney knows that a patent owner argues for a wide interpretation before the District Court in Duesseldorf and a narrow construction when defending validity in the Federal Patents Court in Munich. How much more likely it is to happen, as between the US District Court and a PTO interview?
Professor Mario Franzosi likens a claim, in such a split jurisdiction system, to a long-haired cat.
Before the infringement court, every one of those hairs is standing on end. The cat looks enormous.
Before the validity tribunal (or the PTO Exr), however,the cat’s hair is carefully wetted, so it lies flat against the tough but scrawny body. The cat looks tiny and harmless, and you feel sorry for it.
“I would love to hear from the examiners how “often” one of their interviews goes on for seven hours.”
There are prosecution histories at PTO which include descriptions, less than a paragraph in length, of PowerPoint “presentations” to an Examiner, where multiple attorneys, inventors and experts were present. God knows what went on.
And it’s also true and worth noting that some firms pride themselves on their employment of former high level PTO personnel because of their perceived “credibility” and “authority” during Examiner interviews. Have any of you ever been involved in such an interview? The dynamic is interesting, to say the least.
“These interviews can often go on for seven or more hours of bamboozlement…”
LOL. You’ve clearly never conducted an interview.
“After allowance, the patent owner then goes into court and makes arguments about the broad scope of its claims that run directly contrary to what they told to the examiner in the interview…”
And you know this how?
I would love to hear from the examiners how “often” one of their interviews goes on for seven hours.
MaxDrei is right in suggesting that examiner interviews are a bad thing for patent quality.
For ex parte reexamination, there are usually three examiners present during any interview with the applicant. This reduces the possibility of “bamboozlement,” when compared with ordinary prosecution. The examiner interview summaries in ex parte reexam are usually far more complete and detailed when compared with ordinary prosecution, but obviously cannot come close to capturing what was said during a lengthy interview.
After an informal interview at the EPO, between Exr and atty, which does actually make progress towards allowance, the Exr has the burden of explaining to his/her two colleagues in the “Examining Division” why he/she wants to allow the case. Often, the reaction is a McInroe-ic “You cannot be serious”. The atty isn’t there any more, to provide the “bamboozlement” that will do for the two Examiner colleagues. After a few such painful experiences, EPO Examiners are distinctly reluctant threafter, to admit any more “informal” interviews. The EPO 3-member examining division idea is not just good for consistency. It’s good also for quality.
Anyone who’s worked both on the patent procurement and litigation side will tell you that you just can’t underestimate the “value” of interviews as a way to obscure why the patent was actually granted. A notice of allowability often magically appears, despite a previous and strong office action, after an examiner interview where there is effectively no record. These interviews can often go on for seven or more hours of bamboozlement, with the patent owner narrowly characterizing its own invention to get over the prior art. The subsequent interview summary, if one was even filed, usually says nothing more than “discussed the prior art.” After allowance, the patent owner then goes into court and makes arguments about the broad scope of its claims that run directly contrary to what they told to the examiner in the interview, but of course the other side can’t prove that because there’s no record. It’s an abusive practice, but extremely common.
Anyone who doesn’t think this can just compare the “kill rates” of ex parte and inter partes reexaminations (where litigation is often going on at the same time). In my opinion, inter partes has a much higher rate of claims being canceled because there are no examiner interviews. The patent owner’s arguments are confined to the written record available to all, so the patent owner is no longer able to bamboozle the examiner with positions it later jettisons in litigation.
“Anyway, why is it so important to some contributers, whether or not the Mooney synonym belongs to Crouch? So what?”
First of all, because everyone hates Mooney…
Homeslice thanks. First laugh of the blogging day.
In a lawyer, a compulsion to label everybody else an 1d10t is a bad sign. From where I stand, lawyers earn their crust by seeing more angles than anybody else. Whenever somebody speaks up, with a surprising, unorthodox or unexpected “take” on a particular issue, an intelligent lawyer is grateful for the new insight because, tomorrow, it might make the difference between winning a case, and losing it.
Anyway, why is it so important to some contributers, whether or not the Mooney synonym belongs to Crouch? So what?
If there’s one thing I’ve learned from the investigative geniuses of the Patently O comment section, it’s that anyone that doesn’t join the chorus of “PTO personnel are criminals, SCOTUS/CAFC are idiots” is Dennis Crouch / Malcolm Mooney.
Do you guys prosecute your clients’ cases with the same deftness that you apply in your sleuthing? (If so, it might explain why you’re having so much difficult getting allowable claims.)
MaxDrei, you said “If the Exr can’t understand the gobbledegook in the app as written, when he has all the time in the world at his desk to ponder it”
And then I stopped reading to prevent wasting any more of my time. Over here in the US, we examiners have been limited by something called expected “hours per disposal” since the late 1970s. Nowadays, for many arts, this amount of time is so far from what might be considered reasonable given the nature of the art it is almost laughable. Almost.
~~~~~~~~~~~~~~~~~~~~~~~~~~~
Blimpy, you took the words right out of my mouth.
I guess what it boils down to is this: an Examiner Interview is a chance to use your intellect AND your interpersonal skills to get an efficient and desirable outcome for your client.
Those that actually possess interpersonal skills and are able to, say, chat in a civilized manner with fellow professionals, welcome this opportunity;
those that do not, well, they are banished to blogs and wake up in a cold sweat every time the words “Examiner Interview” are mentioned.
“…the real substance of what goes on in an interview usually does not show up in the interview summary. Thus, applicants are able to make (and test) arguments without going on record.”
This is pure paranoia. If the applicant/rep made outrageous “off the record” admissions in an interview, a savvy Examiner would seize on it and put it in an interview summary to get it on record.
Also, despite the fact that the interview summary is sparse, the applicant’s next response or the Examiner’s next action will reflect the important substance of the interview as it must.
For those that actually know what they’re doing this is a huge non-issue. For the naive among us like “Mooney,” what goes on in examiner interviews continues to be some kind of boogeyman hiding under the bed.
My guess is that in Mooney’s dark past he was studying a file wrapper in which an interview took place and he could not figure out what occurred during the interview and he suffered from this some how or the other, and it has haunted him ever since.
To Mooney, anyone who follows this site knows well your wild imaginings about what dark chilly things go on in interviews. Don’t make someone pull quotes and stuff it in your face – again.
“your conspiracy theory is interesting”
Yes I already said it was interesting, but if you think the readers here don’t see through your charade, you are terribly naive, but then we all knew that already.
“As if the Dennis/Mooney “coincidence” isn’t interesting enough, it amazes me that there are people like Dennis/Mooney that think something shady goes on in the interview process.”
One advantage of the recession, Dennis/Mooney, is that the amount of payola needed to get a case allowed has decreased by 10-15%.
Of course, I am just kidding. This is just a joke.
I finally can agree with “An Examiner” on something — “social networking” — it is part of life including business life, makes the job more interesting, sometimes gives you a sense where the other party is coming from so an agreement can be more easily reached.
sad examiner: “Please cite to me where in the MPEP you’re supposed to be scamming inventors by calling their attorneys needlessly to run up their legal fees. And for what, so that you can waste some time not examining?”
Cool straw man, bro. First off, let me address your sound characterizations with a cite of the MPEP. MPEP 707.07(j)II and MPEP 713.01III. If there is allowable subject matter in the spec, I will call. If the attorney is stubborn or the claims need to overcome multiple, significant issues (ie, looong interviews), I may plan that over several phone interviews. Perfectly reasonable.
As for what I gain from “shooting the breeze” with attorneys… It’s called social networking, you do it because it’s fun and makes the job much more enjoyable, especially if you keep seeing the same attorneys over and over (and you will, if you work here long enough). If I ever want to leave the PTO, I have guys I can turn to. Plus, attorneys can be surprisingly cool when we’re both not on the record. I semi-frequently chat chit with some of Oblon’s boys at Starbucks, the metro ride home, or CCR (haha, jk). You should try it sometime. Maybe you wouldn’t be so saaaad. 🙁
Blimpy: “The article lamented that, in Examiner Interviews, the applicant and/or representative sit down with the Examiner and there is no record, etc.”
I saw the article you are referring to and Dennis did not say that “there is no record.” Rather, he noted, correctly, that there is no transcription or recording of the interview and most interview summaries are vague and/or sparse.
“As if the Dennis/Mooney “coincidence” isn’t interesting enough, it amazes me that there are people like Dennis/Mooney that think something shady goes on in the interview process.”
(1) Your conspiracy theory is interesting.
(2) You again misrepresent the objection. The issue is not that “shady” things go on in every Interview. The issue is that the lax documentation of the substance of Interviews provides an opportunity for Applicants to make arguments without the estoppel issues that accompany a written Response. If you think that Applicants don’t take advantage of this fact, then you are incredibly naive.
Ha. That’s interesting, 3700 Examiner. Exactly the opposite at the EPO. Filing a “mess” would reduce your chances of an interview.
If the Exr can’t understand the gobbledegook in the app as written, when he has all the time in the world at his desk to ponder it, whatever is the point of encouraging the beast, by offering the fast-talking English-native-speaking author of the schmarrrrrn an oral opportunity for further attempts at bamboozlement?
Tell me 3700, these things you designate “mess”. Are they from domestic US Applicants, or are they written outside the USA? If the latter, how come the US attorney knows what they mean, and you don’t. If they were written inside the USA, why do you excuse them so readily?
More gratuitous bashing…
MaxDrei: “we are all intelligent to give each contribution the “weight” it deserves, whether it’s anonymous or not.” Wouldn’t it be better if we applied that intelligence before we post (rhetorical question)?
Jules: ” I know myself I can contribute intelligently..” That remains to be seen.
..just resorting to some humor to blow off some steam.
Germ, you are incorrect in stating that an examiner can not take other time for an interview if it is “examiner-initiated”. It is up to the examiner’s SPE and usually depends on 1) why the examiner initiated the interview and 2) the outcome. The most common reason an examiner will initiate an interview is to propose an examiner’s amendment in an effort to expedite prosecution. This interview almost always results in an allowance via examiner’s amendment and most SPE’s would not grant 1 hour of other time in these instances. Sometimes examiners initiate an interview because something is hindering prosecution. For example, the claims are so horrible, full of typos and 112, 1st and 2nds issues that it is near impossible to determine claim scope. You can’t very well conduct a prior art search and apply it to claims if you can’t figure out what the claims define now can you? My SPE will grant other time for this on a case by case basis — basically, it depends on the complexity of the subject matter and the severity of the mess the applicant filed for claims.
Likewise, there this: link to patentlyo.com
Couldn’t have said it better myself, MD, about anonymous blogging. I know myself I can contribute intelligently, I can resort to humor, or just blow off some steam. The blog is not an official case, so it is fun sometimes to blog and discuss opinions, the truth, and even facts sometimes if I have to.
Also, in case anyone missed it, check out this podcast from a while back, regarding the PTT and anonymous blogging: link to chicagoiplitigation.com
Well, let anonymous me put on record my concern about interviews at the EPO, where the Exr makes a pretty good rejection, then there’s an interview, then the case gets allowed, for reasons that are not apparent on the written record. Such interviews are presently rare at the EPO. Quite right too. Some people think that informal interviews should be resorted to more often, to “master the workload”. Those people don’t have to write clearance opinions.
The point about permitting anonymous contributions is that it allows contributions that would not be made if they were attributable. That cuts both ways but, hey, we are all intelligent to give each contribution the “weight” it deserves, whether it’s anonymous or not.
Blimpy – I don’t believe that I’ve taken a strong position one way or the other on interviews. I have concerns about how interviews shape prosecution results since the real substance of what goes on in an interview usually does not show up in the interview summary. Thus, applicants are able to make (and test) arguments without going on record. This is in contrast with the ordinary course of prosecution where all applicant arguments are of record and end up impacting claim scope.
Despite this concern with the interview system, I still tend to believe that they do more good than harm.
But that’s just my point Dennis. Interviews aren’t “off the record.” There must be a next move in response to the outstanding action.
The exception would be an interview that occurs before a first action, which you have indicated you favor. Yet this is where the most morally hazardous behavior takes place.
Your positions do not seem to be consistent.
Aside from the Dennis=Mooney theory (I don’t want to look under that rock at the moment), the requirement that the interview summary be made in writing (and the sub-note that the applicant can augment – in writing – what the examiner has in writing) dovetails nicely with a conversation that regards the criticality of what the Office can and cannot do based on the rules, specifically 37 CFR 1.2. This may reinforce your point. While the conversation dealt with re-opening after appeal, the critical linking matter is that the Office is limited to actions based on the WRITTEN record.
See: link to patenthawk.com for more details (and some gratuitous 6-bashing).
B – I discovered an error in the calculations in that post and am working to correct the error.
I do have concerns regarding the off-the-record nature of examiner interviews. However, my sense is that the overall benefits of interviews outweigh that concern.
Its the same with allowing anonymous comments on Patently-O. It allows for bad behavior, but in my view, there are at least enough high-quality anonymous posts to outweigh the negative.
–seminary– -> seminar
Incidentally, the Rules that discourage or prevent Interviews before the first action are designed to prevent the shadiness that Dennis/Mooney is worried about, yet Dennis/Mooney seemed to come out in favor of interviews before the first action.
Twisted logic at its finest.
Yesterday, Dennis briefly posted another article about Interviews that, for some reason, quickly disappeared. The article lamented that, in Examiner Interviews, the applicant and/or representative sit down with the Examiner and there is no record, etc. Strangely, (or maybe not so strangely to those, like me, who are paying attention) it was almost verbatim to Mooney’s lamentations many moons ago on the same topic. As if the Dennis/Mooney “coincidence” isn’t interesting enough, it amazes me that there are people like Dennis/Mooney that think something shady goes on in the interview process.
Well here is a news flash for Dennis/Mooney. Anything that goes on in an interview must eventually wind up in the record. I have NEVER seen a case where there was a FINAL rejection on the record, then an Interview took place, then the case was magically allowed without any evidence of why.
Consider that as a matter of record, an Interview Summary must be placed in the file, a response to the final action must be filed placing the application in condition for allowance (including, one would expect, the arguments successfully advanced in the Interview), and in many cases, a statement of reasons for allowance are filed by the Examiner.
Even if there is some off the record dialog in the Interview – so what? That is the whole point of the Interview process: to try to crack the deadlock and find out what the Examiner’s problem really is in a less rigid environment.
Whining about the lack of a record and demanding a detailed transcript of an interview would ensure that interviews are never conducted – which is not progress.
Next thing you know, Dennis/Mooney will want a complete transcript of all cocktail party, seminary, and golf course conversations.
Puzzled makes a good point. Sometimes an Examiner does misunderstand either the invention or the art. I can respond by explaining orally, or in a letter. The letter option works much more effectively, whenever the Examiner is working in English as a foreign language. At the EPO, this is nearly always the case.
Anyway, an EPO Examiner wants a submission in writing, to discuss with the other two members of the Division. A USPTO Exr wants a letter for a quite different reason, the “written record”, no?
I can see that an interview would be helpful to clear up possible misunderstandings about the art or about a rejection, but I haven’t had that happen very often. Usually it’s just strong disagreement about whether something is obvious or whether it satisfies written description, in which case it doesn’t seem like an interview would be helpful–just people repeating, “yes it does!” and “no it doesn’t!” In these cases, appeal seems like the only thing that might help. So in that situation, why waste time and money on an interview with a blanket requirement (as indicated by Night Writer) that each OA needs one?
Talking about procedural economy, and efficiency of disposal of cases, I see from the above that USPTO Examiners in general don’t like interviews but might offer them when they need a few text tweaks to get a case in order for allowance. They must be envious of EPO Examiners, who routinely turn down requests for interviews (whether face to face or telephonic) but then go and issue a Notice of Allowance accompanied by a “text proposed for grant” which is full of manuscript insertions by the Primary Examiner. When an EPO Examining Division (3 members, you will recall) does issue a “Summons to Oral Proceedings” it is about to refuse the application. Watch out.
From my experience:
Interviews:
a) I do them when I have a fixed cost prosecution and can tell the examiner doesn’t understand the art. It usually speeds things along to spend time explaining the art when I have a good application.
b) When the client really wants the patent and requests an interview. Usually means I get lots of time to figure out how to present my arguments.
c) Some big clients require an interview for every office action.
Generally, I find interviews extremely helpful. Particularly when either I don’t understand the examiner’s argument or the examiner doesn’t understand my argument. I would say that cases that are interviewed are far more likely to get allowed.
Frequently, the examiner has some problem with the claims that they have not articulated very well in the office action.
My understanding from examiners is that interviews take extra time and they aren’t that crazy about them. With that said, most examiners are pretty good about making a good faith effort to understand my arguments.
I call BS on the “examiner” milking interview time above. I have never heard of an examiner doing this, and can’t think of any way that it could be beneficial to an examiner. First, you can’t claim other time for an examiner initiated interview, only applicant initiated interviews, so the attorney would have to be the one initiating the milking. Second, even when you can claim time, it’s only an hour, at least part of which was presumably burned up by the interview, so what’s the point in milking that?
Accuse us of milking RCEs? Fine, there’s some truth in that. Accuse us of milking interviews? That’s retarded. If anything, we avoid them. By the time I talk to the attorney, review the case I did 5 months ago, set the interview up with the attorney and my SPE, brief my SPE on the case, reserve a conference room, and have the interview, I’m looking at probably three hours used up, only one of which I can claim. The only time I set up an interview on my own initiative is when I want to allow a case.
My guess is “an examiner” is not really an examiner.
An Examiner writes “I merely wish financial success upon my counterparts. Otherwise I don’t have a job.”
Please cite to me where in the MPEP you’re supposed to be scamming inventors by calling their attorneys needlessly to run up their legal fees. And for what, so that you can waste some time not examining? You’re a leech on the only people in this process (inventors and the companies that support them) that add any value to society. No wonder inventors are filing less.
You have the inventors names and addresses in the file wrapper, why not just go directly to them and plunder their stuff?
Malcolm Mooney quoted an Examiner:
“As an examiner, I was weary about a four reference 103 on an independent claim, but the examiners I’ve been dealing with do this without second thought.”
And then himself wrote:
“Depends on the claim. It’s easy to take an obvious claim and keep piling on more obvious crap. That doesn’t make it less obvious. It just makes the claim longer and easier to design around”
..which struck a chord with EPO practice of routinely citing more than two references when attacking obviousness of a single claim, settled within a year or so of the EPO opening for business in 1978. The rationale goes like this:
If the features of the claim work together to solve the objective technical problem, then you have to get from the primary reference to within the claim scope in one single obvious step.
But if the several features in the claim that are relied upon for patentability over the art are each solving different problems, well then a different support reference, one for each such “partial problem”, is enough to break the claim.
My hunch is that the USPTO trainers in Art Unit 4100 are brainwashing all those newbies with dangerous EPO stuff.
Venkman’s problem is that he’s never tried crossing the streams at an interview.
Venkman: “All right. This rejection is TOAST.” (fires up proton pack)
step back asked “In other words do they have independent minds that can be reached by way of logical argument?”
for a frightening answer, check out
link to just-n-examiner.livejournal.com
especially the comments at 2009-07-18 03:21 am and 2009-07-20 03:13 am.
Another examiner: “An honest admission of blatantly unethical behavior in purposely attempting to run up clients legal bills.”
I highly suggest you read MPEP 713.01. Not only is my behavior apparently “blatantly unethical”, it’s also required by the MPEP under quite a few circumstances.
And my objective isn’t to filibust the client, I merely wish financial success upon my counterparts. Otherwise I don’t have a job.
And remember kids, if it’s on the Internet, it’s gotta be true.
“As an examiner, I was weary about a four reference 103 on an independent claim, but the examiners I’ve been dealing with do this without second thought.”
Depends on the claim. It’s easy to take an obvious claim and keep piling on more obvious crap. That doesn’t make it less obvious. It just makes the claim longer and easier to design around.
But those last two considerations are irrelevant to an Examiner, or should be.
Venkman, for penance you must deal with the slimers for at least two years.
Dr. Venkman, I imagine it’s very interesting going from being a monopoly-holder to a monopoly’s client. It perhaps feels something like going from bully pulpiter to beggar. Oh the things we do for twice the salary and a 60-hour workweek…
I only wish that all examiners (and a certain former PTO director) could experience our side of the table.
Venkman,
Your views here, as a person who lived on both sides of the table (examiner, then prosecutor) would be invaluable.
What goes through the mind of the ordinary examiner? Do they (not just you, but also your colleagues) try to read the specification to get an idea of what subject matter the claims are directed at? Do they (examiners) understand all the aspects of 35 USC 103, the statute as opposed to what the MPEP says about it? In other words do they have independent minds that can be reached by way of logical argument? What is your view of ordinary examiners now that you are on the other side of the table? Feels good to be on the receiving end rather than on the dishing it out end, huh? Any insights you can give would be appreciated.
Welcome to post-KSR prosecution. 103s for everyone! Everything is obvious if you can cherry pick words out of disconnected references and string them together with a meaningless rationale about “make better processing/speed/efficiency”(sic)
P.S. Venkman, who you gonna call?
I’ve been on both sides of the interview table, as an Examiner and now working at an IP firm this summer. Our telephonic interviews this summer haven’t really advanced prosecution. The examiner has, in all cases, dug his/her heels into a pretty poor rejection. This is This is not to mention any language barriers there may be that are only exaggerated by a VOIP system. We are getting an increasing number of, what I call, “Frankenstein rejections.” As an examiner, I was weary about a four reference 103 on an independent claim, but the examiners I’ve been dealing with do this without second thought.
For me, interviews are the best when:
-I can show incontrovertibly that the reference indeed discloses the limitation that we’ve been arguing about for the last couple office actions (personal interviews can help, such as showing diagrams side-by-side)
-the attorney can show me the error of my logic, such as misinterpreting the reference or claim language
-agreeing that there’s a dependent claim or even something not claimed that isn’t in the reference
In general, an agreement as to whether the last office action was proper or improper, and the best direction to advance prosecution. In the long run, this saves me time and the inventor money.
Fishing expeditions, “What if I claimed this? Or this? Or this?”, on the other hand, usually get us nowhere.
Gideon, I envy you.
I have found interviews to be useful in a number of cases.
I have also found, on occassion, that the examiner won’t even explain an unfounded leap in logic in their rejection. Basically, one asserted A was shown and A=B (which it did not). The examiner refused to explain themself and would not even tell me if I was right or wrong that they what they were suggesting involved looking at the molecular level (which would have created a different problem). In the end, I obtained the claim by focusing on a different portion and making a minor change. (I believe that allowed them to save face).
It is vital to be there in person. Back in the day, we tried using hypnotists during interviews to get the examiners to see it our way. On very important ones we used Orson Wells, but he fumbled things up more frequently as he got older. The Amazing Kreskin was sometimes effective, but he was more expensive than Wells!
Any data re: difference in allowance rates for in person interviews vs. phone interviews?
Patent_Medicine, it does seem rather pointless, except maybe regarding formalities, if the examiner has not yet performed the search. As you pointed out, there are a few rare exceptions.
Prior to first action interviews appear to be more in the realm of an examiner’s choice for first action allowance (lol! these days) or other questions the examiner may have.
What about that interview times take away from total time the Examiner has on the application? Maybe that makes them more likely to accept after after a first OA? … or maybe not.
If we filter out examiner-initiated interviews, would the percentage change? In my experience, I’ll request an “early” interview if I get an amendment that I can’t understand, but a “late” interview is usually one that proposes an examiner’s amendment.
Under what conditions would an applicant ever request an interview before a first office action? I’ve only done it once, when I knew that there was close prior art, and we wanted extremely narrow claims in a continuation, just to finish off the patent family. Has anyone else requested an interview before a first office action? Why did you do it?
My primary client does not pay separately for interviews, so perhaps I should mention that point at the outset of each interview in order to reduce any bias from the examiners that I am running up the clock.
Some have said that no conclusion can be reached from this data, but I believe a pretty solid conclusion is that interviews as a factor by themselves are not a game changer — there is no significant difference in allowance rate if an interview is conducted or not. Conducting an interview is not, considered alone, a silver bullet to allowance. I am also a little surprised that it appears the allowance rate for large firms is below the average for all the applications in the sample group, but this could also be due to art and complexity level taken on by big firms not handled by small firms and individuals.
In my experience having prosecuted many patent applications to issuance, and interviewed a great percentage of them, the overriding factors are (a) attorney/agent personality (e.g. do they show the examiner proper respect or just try to steamroll the examiner), (b) examiner/SPE personality (are they truly interested in discussing possible amendments to make allowable or are they just examining another of many many patent applications and going through the motions), and, probably most important (c) is the subject matter really of innovative value (or is it just legal fodder to build a patent portfolio).
I have found that in the applications where the subject matter is really important to my client, explaining that importance (honestly) to the examiner often piques the interest of the examiner(s), and often leads to some agreeable allowable matter. Still, it may not be everything the client wanted, but its something, and it’s a starting point for possible derivative claiming.
Re the above question [about applications allegedly being held up for years by [proveable?] completely unreasonable examiner or SPE conduct]: I have often wondered why there is not more use of [filing a complaint under] the Administrative Procedure Act (5 U.S.C. §§ 551-559 and 701-706)?
If well founded and done effectively that can get the attention of the PTO Solicitors Office to go to the Group Director to get the matter addressed, or otherwise settle the issue.
The data above is a little flawed, and very few conclusions can be drawn. Again, are the interviews listed above Examiner or Applicant Initiated? There are many reasons that an Applicant/Examiner might request an inverview and I don’t think it represents whether or not it results in an allowance right away. Obviously there are many situations where Examiners AND Attorneys abuse the Examiner Interview in order for more billable hours/$, write-off time, etc. Unfortunately, that’s the nature of it.
I’m going to go off-topic, much has been made about Interview effectiveness lately. And hopefully this will help some understand the Examiner’s POV and will make the interviewing process a little better. From an Exmr’s standpoint, Interviews are MOST productive in these situations: (1) there’s some sort of allowable subject matter or glaringly clear difference between the prior art and the Applicant’s invention (2) there’s a misunderstanding/misinterpretation between the Applicant’s and Examiner’s points of view that a discussion would be more beneficial and time efficient than going back and forth in writing (3) a sample/example can be demonstrated showing differences between the prior art and the invention (4) a proposed amendment for discussion is submitted prior to the interview. Interviews are the LEAST productive when: (1) the Applicant is not prepared (2) the Applicant is “fishing” for allowable subject matter without making any suggestions (i.e. calling the Examiner when the claims have all been rejected by 102/103 and asking “well, what would make the claim allowable?”) (3) the Applicant shows up without any suggestions or concrete arguments to the prior art and tries to burn through the “hour” interview time by making small talk about politics/weather/etc. (4) the Applicant brings their client/inventor along when the client/inventor does not understand patent procedure, claims, etc. (I once had an inventor that read a poem they had written about their invention to me–and their Atty is from one of the firms mentioned above).
BV-If the Examiner is working from home they are still required to be in the office twice a biweek for one hour in which they should be able to arrange for an interview and I don’t see why a phone interview would be out of the question.
In my experience, attorney-initiated interviews are usually worthless if the attorney just wants to argue the rejections in person, except in the case where the examiner is clearly wrong and is ignoring persuasive arguments and the SPE is more reasonable. Attorney-initiated interviews are useful if the attorney doesn’t understand the rejections and wants clarification or wants my opinion on a possible claim amendment. Examiner-initiated interviews almost always result in an allowance, because pretty much the only reason for us to initiate an interview is to propose an examiner’s amendment. Admittedly, I have not had many applicant-initiated interviews (probably less than 10), but they have generally been productive with the exception of the couple that wanted to argue against reasonably sound rejections.
Have fun in retirement Gideon, I wish I was in your shoes right now.
BV, appeal now. Do not wait. Appeal is a little more expensive up front, but cheaper in many ways down the road. In addition, you should keep appealing when prosecution is reopened. The examiner gets no more counts. Punish her as much as yu can. Eventually, she will be forced to do her job.
“I’ll purposely try to separate that into 4-5 different phone interviews […] I’m hoping you guys bill per interview for those or have a minimum bill time increment”
An honest admission of blatantly unethical behavior in purposely attempting to run up clients legal bills.
“One attorney got kinda angry at me for doing it once, I don’t think he fully appreciated what I was doing for him.”
Whoooosh.
This might be a bit off-topic but our US attorney has been trying to arrange an examiner interview for over a year now, but the examiner and indeed her supervisor seem to be somewhat elusive (I think the examiner works from home).
The examiner keeps saying that there is no support for various features in the claims even though we have specifically pointed out basis in the description several times, hence the request for an interview. However, in the meantime we have had to file several responses and RCEs just to keep the application alive, which, from the applicant’s perspective seems to be pointless and expensive.
Has anyone else experienced similar circumstances? Any suggestions for sorting out the situation?
A whole new day is coming. As R&D organizations switch to a combination of more in-house application development, and pay for performance work when using outside counsel, the interview will become a costly event where there may be no additional compensation for the attendees. If you are getting paid for specific application milestones you’ll be less likely to hop a plane (or the metro) to have an interview unless it will move the ball forward.
Several of the patent agents we work with have told us they have started taking client IDS and prior art disclosures at face value since they are being paid by the application and simply don’t have the time or desire to read several hundred pages of prior art if it’s not going to change their compensation. Some are being told that their first “milestone” payment won’t occur until receipt of the first OA – even less of an incentive to do a lot of work up front. Just wait for the first OA and worry about it then.
I would also like to see the class/subclass of the applications the applications where the interviews took place. I think this may be more revealing than the timing of when there was an interview.
Examiner,
It’s sad to see you believing that inventors (or the companies they work for) are an endless source of loot. I’m referring to your “doing them a favor” line re multiple interviews.
Small start-ups and solo inventors do not have an endless pot of gold buried in their back yards. Neither do the larger companies, especially in these harsh economic times. You are not doing anyone a favor by spinning the interviews crank multiple times unless the case warrants such a tactic (due to its complexity).
Hard to believe, but at the other end of the telephone line (assuming these are phone interviews) there are real people with real emotions and real investments of their limited cash and of their limited time here on Earth. It’s not funny to waste these away by playing games.
I’m confused. Because applicant didn’t write claims that complied with 101, 112 1st, 112 2nd, and 102/103, I’m at fault for prolonging?
Also, I don’t allow any applications, so you need to change “prolonging the patent-granting process” to “treating the applicant to a shortened patent-application-abandonment process”.
Ideally the PTO should be allowing allowable claims and rejecting non-allowable claims the second the application is filed. Just because we live a non-ideal world doesn’t mean that a$$holes like “An Examiner” should be prolonging the patent-granting process, and raising applicants’ costs, for the heck of it. Or maybe next time he issues an OA, “An Examiner” should write, “F**k you, applicant, I don’t care, I don’t have to, I’m the PTO!”
Meaningless data without distinguishing which are examiner-initiated and which aren’t. I guarantee that 95% with examiner-initiated result in allowance.
I do, however, love calling up attorneys and shooting the breeze. Works out for both of us, I get other time and you get to bill extravagantly.
The best is when you guys want to interview with a case having 101, 112 1st, 112 2nd, and prior art issues. I’ll purposely try to separate that into 4-5 different phone interviews due to “time constraints”, even though they take only a few minutes. I’m hoping you guys bill per interview for those or have a minimum bill time increment. One attorney got kinda angry at me for doing it once, I don’t think he fully appreciated what I was doing for him. 🙁
Like Gideon said, in-person interviews are great for billing. I line up a whole bunch of ’em at a time, have the associates work up a proposed response and brief me, bill their time and mine for that, then charge $1000 for each interview, which usually only takes a few minutes. And since I’m from outside DC, I split the cost of my airfare and my stay at the Ritz-Carlton between the clients. Ka-ching!
Harnass Dickey are not alone in the lower case.
My experience – interviews are typically a waste of client money. In other words, great for attorneys.
It is standard in the industry to bill 1/2 the day to a case when there’s an interview – you start billing 2 hours before the cab ride and you bill right through your return. Can be 4 hours plus, easy.
What can be accomplished in an in-person interview that couldn’t be accomplished with much less time and fossil fuels on the phone?
Answer – rarely anything at all.
The exception is when you have a soft examiner who you can goad into an allowance.
Anyway, I have always despised interviews because I have never gotten a compelling answer to my question – what could I say in front of the Examiner that I couldn’t say on the phone or in a Reply?
Dennis – This is my last post – I’m retiring. Great blog – I truly owe you a debt for what you’ve done for me. Patently-O has been my sole source of patent information for several years now. Extremely well done – and don’t worry, I’ll keep your Mooney secret. I know you can see my IP, so if you ever get out my way, look me up – fresh, unadulterated food on me.
Truthfully, I can’t tell you how happy I am to be getting out of this line of work. Patent law is a complete mess, and I have never felt more that the entire process is a game than I have right now. A game, mind you, that is rigged in favor of uber corps.
Good luck to all.
Gideon.
Wow, I didn’t realize there were so many patents on that (or at least in DC’s sample). I can only imagine what the “interview” consists of.
Harness Dickey and Pierce is a patent-eligible process. It is related to BDSM.
Who is Harness Dickey and why is he the only one in lower case?
I agree with the statements of “thresholding units” above.
In addition to the comments above, sometimes interviews are requested in order to address procedural issues (e.g., to contest an erroneous FOA), and the Examiner will submit the paperwork to memorialize what was discussed. Thus, drawing any conclusion from these numbers is difficult at best without reviewing the substance of what was discussed.
As with many of these sorts of statistics, my guess is that the late interview category is self-selecting, which prevents you from deriving meaningful causal relationships from after-final interviews and allowances.
In this case, it’s fairly unlikely for applications to go abandoned when the applicant and/or the attorney has taken enough interest in the case to request an interview. The sheer fact that an interview is requested after-final is an indication that the applicant plans to continue pursuing the application, either because it’s already close to allowance or because they plan to file an RCE. Most of the abandonments at this point will be associated with cases where no interview was requested.
On the other hand, interviews after a FAOM have less correlation with an abandonment later in the case, because (a) there’s no final action forcing the applicant to decide whether an RCE is worth the money, and (b) it’s probably far less clear whether there’s room to maneuver in the case toward something that’s both allowable and worthwhile.
On a side note, do these statistics filter out examiner-initiated interviews? The PTO has been using some statistics to convince examiners to be more amenable to interviews, and they cited a correlation between interviews and allowances in the following action, but it was unclear whether their statistics excluded examiner-initiated interviews (which are quite often done to offer an examiner’s amendment, so the next action will be an allowance if the applicant agrees).
Mike, in addition to subject matter (and art unit pendency), the differences could also reflect clients’ and firms’ desire to fight for broad claims or to take clearly patentable subject matter and file a continuation with broader claims.
Sure, the first-place patent filing organization in terms of success-rate (Oriff at 72%) has a high level of interviewing (35%). But the second-place successful filer (Fitzpatrick Cella at 69%) has only 18% of cases interviewed.
I’m curious if patent subject matter makes a difference here, but I wouldn’t know where to go for the data.
The difference in allowance rates between early and late interviews, as well between the latter and cases where there was no interview, may simply reflect the Office’s motivations and discretion. An early interview (after a non-final OA) is a matter of applicant’s right, usually initiated by the applicant, and does not reflect the Office’s position on the case. However, an interview after a final OA is discretionary, and may be granted more frequently when the Examiner already perceives a relatively clear path to allowance but for minor amendments. These late interviews are frequently initiated by the Office (in my experience). Applicants, desiring to obtain ‘low hanging fruit’, may seize the opportunity in most cases, amend the claims, and gain an allowance. Thus, a correlation between late interviews and an increased allowance percentage is not surprising.
What does seem a bit counterintuitive is the suggestion in the data that an early interview does not tend to speed allowance. I can think of some possible reasons, but in general, this result runs contrary to my own experiences.