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Pre-Appeal Conferences vs. Interviews

By just_n_examiner

Well, since the post I've been trying to write for a couple of weeks hasn't yet come together, I'll throw this stray thought out there.

Why would an attorney/applicant go to the time and expense of requesting a pre-appeal conference without first requesting an interview with the examiner?

I've seen more than a few instances where the attorney has requested a pre-appeal conference, but the rejection seems solid to both the examiner and the conferees, yet the attorney argues (somewhat unsurprisingly) that the prior art doesn't teach what seems to be there. And amazingly to me, in many of those instances, the attorney had never bothered to request an interview beforehand.

When this happens, clearly there is some disconnect between the attorney and the Office. Regardless of whether it is the Office or the attorney who is mistaken, in that situation, an interview is almost always going to advance prosecution more effectively than a pre-appeal conference.

I understand that some attorneys might not have had much luck with interviews in the past, but even so, were I in that position I would certainly want the chance to have some immediate input when the examiner was not interpreting the claims or prior art as I believe they should be interpreted. If the attorney has been unsuccessful with the written arguments filed with their amendments, I wouldn't count on the written arguments in a pre-appeal brief carrying the day, either. Sure, sometimes the conferees will disagree with the examiner and the rejection will be withdrawn. I personally would still rather have some verbal input into the discussion, though, and the only way to do that is with an interview.

Full post as published by Just a Patent Examiner on August 30, 2010 (boomark / email).