In this installment of the Precise Prosecutor video series, George Howarah explores one of the most underutilized yet powerful tools available to patent practitioners: the examiner interview.

The Common Pitfall

Many patent prosecutors fall into the habit of leaning heavily on written responses when responding to office actions. While written arguments certainly have their place, relying on them exclusively can lead to prolonged prosecution timelines, increased costs, and missed opportunities to advance the application toward allowance.

Why Examiner Interviews Matter

Examiner interviews offer a direct line of communication with the patent examiner, providing several key advantages over purely written correspondence:

  • Clarifying the examiner's stance: A brief conversation can reveal the examiner's true concerns and reasoning far more effectively than trying to interpret written rejections alone.
  • Opening the door for direct feedback: Interviews create an opportunity for real-time discussion, allowing practitioners to propose amendments or arguments and receive immediate feedback on whether they would be persuasive.
  • Demonstrating commitment: Requesting an interview signals to the examiner that you are engaged and serious about working collaboratively toward a resolution.
  • Reducing time and cost: By addressing the examiner's concerns directly, interviews can significantly shorten the prosecution timeline and reduce the number of office action responses needed.
  • Minimizing prosecution estoppel: Because interviews allow for informal discussions that don't create the same prosecution history as written amendments, practitioners can explore options with less risk of limiting claim scope during potential future litigation.

A Best Practice Worth Adopting

George advocates for a straightforward approach: schedule an interview after every office action. This simple practice can transform the prosecution process, turning adversarial exchanges into collaborative conversations that move applications toward allowance more efficiently.

Whether you are a seasoned practitioner or new to patent prosecution, incorporating regular examiner interviews into your workflow is one of the most impactful changes you can make to improve outcomes for your clients.