Patent Law

Interview First

By Gary Odom and Jordan Kuhn

The USPTO has a pilot program for select art units offering applicants the opportunity for an interview prior to first office action. Of course, a prosecutor could always voluntarily do the same. While pre-action interview may be "in the interest of compact prosecution," under the current USPTO regime, it is more a formula for vexation.

Under the present regimen of no-first-allowance, a pre-action interview educates an examiner to improve his non-final rejection. In absence of an interview, the typical lazy examiner gives a dumb first office action. Amend accordingly and get ready for appeal after the final rejection. Hell, you were going to appeal anyway. You just made it easier on yourself.

In recent years, examiners have called for a pre-action interview. These examiners were just fishing to catch a clue on the cheap. They have never resulted in improved examination. The absolute stupidest examination ever was from an examiner who called before showing how low he could go.

The only successful interviews have fallen into categories at the extremes of examination: dismal and spitting distance. Dismal means a rejection so bad to arrange an interview with the examiner and his/her SPE (supervisor), and explain to the SPE how imbecilic the rejection was. This has worked. While the examiner could have easily been mistaken for a mule, the SPE listened. At the other extreme, if it appears a grant may be at hand with a bit of tweaking or rhetoric, in other words, within spitting distance, a friendly chat with the examiner may ease allowance.

Full post as published by The Patent Prospector on June 05, 2008 (boomark / email).