There are benefits of conducting Examiner Interviews. It is overlooked in back-and forth communications with the United States Patent office (USPTO) that the patent examiners are human. An examiner interview is a conversation between your attorney and the USPTO examiner to review your application. This discussion usually occurs over the phone. Examiner Interviews are usually requested after an Office Action from the USPTO is received.
Actually speaking to a USPTO patent examiner enables better communication. It makes your attorney able to listen to how the examiner reacts to certain arguments and/or observations. It also enables your attorney to adjust claim amendments in real time by adapting to the views and suggestions of the patent examiner. An examiner interview can also help clarify concepts by using exhibits and visual aids to help the patent examiner with areas they are confused about. An effective examiner interview can reduce the pendency and associated costs by eliminating subsequent Office Action Rejections in the application process.
Requesting an Examiner Interview after the first Office Action is received is fine but the effectiveness of an interview at this early stage may be limited due to the nature of the rejection. If prior art rejections could be countered with claim amendments and/or arguments that require no further explanations, then the benefit of conducting an interview might not be significant. But, if you are dealing with a second Office Action, then an interview could be helpful. Even if your attorney and the examiner cannot reach an agreement, the interview result may provide guidance for the next steps to take.
Your attorney should lead the interview and sometimes it is even better if your attorney just happens to be a former examiner so he/she knows not only the inner workings of the USPTO but how an examiner may think. On some occasions, it could also be helpful if the inventor could participate in the interview so they can demonstrate certain features of the patent.
It may be useful for the attorney to set the stage by summarizing key points of novelty that distinguishes the invention over the prior art instead of immediately diving into proposed claim amendments. By talking about the background, the examiner and attorney may suggest a number of claim amendments that aim to capture these key points and distinctions.
