The Inside Scoop from a USPTO Patent Examiner
Only a handful of patent practitioners have seen the inner workings of the United States Patent and Trademark Office. Yet, having an understanding of a patent examiner’s experience at the USPTO can be of great value.
Given time, patent examiners evolve in their understanding on patent laws and procedures, and they adjust their approaches to patent examination according to the lessons they learn through experience. In Episode 52 of the Better Patents Now podcast, “The Inside Scoop with Former Patent Examiner Joshua Rudawitz,” listeners gain a glimpse into what it is like to sit on the other side of the table and gain a better understanding of life at the USPTO.
What NOT to Do as a Patent Professional
In Better Patents Now Episode #52, patent attorney Joshua Rudawitz, reflects on his past experience as a patent examiner dealing with patent attorneys and patent agents. When asked about “the worst thing a patent examiner ever did,” Mr. Rudawitz recalls a patent attorney who tried to leverage his client’s poor health to earn sympathy and to help to move his client’s patent application to issuance. While patent examiners are human beings with emotions, it is recommended that patent practitioners refrain from asking their patent examiners to skirt any rules. Instead, rely on arguments backed by patent law and procedure to overcome rejections.
Advice for a More Pleasant Patent Prosecution Experience
The number one piece of advice Joshua Rudawitz provides to patent professionals is to understand that a patent examiner’s hands are often tied by case law and USPTO guidelines when examining a patent application. When USPTO guidance requires patent examiners take specific actions in particular situations, patent examiners are required to stick to their training. Mr. Rudawitz recalls in the podcast a telephone interview where an inventor took a rejection personally – as a result of that experience, he encourages patent practitioners to try to understand that disagreements between applicants and the USPTO are the reason for the appeal process, and he recommends educating patent clients on the amount of discretion patent examiners are given throughout prosecution to avoid emotional reactions.
Evolving as a Patent Examiner
Perhaps one of the most important takeaways from the Rudawitz interview is that patent examiners go through a number of career phases. When Mr. Rudawitz began his career at the USPTO, his degree in mechanical engineering landed him a position in an art unit that deals with a variety technical subjects ranging from vehicle hitch attachments to robots. The patent office does not provide any technology-specific training, so the nature of a patent examiner position is to learn about new technology as it comes into the patent office. The expectation is that USPTO examiners will figure out how to understand inventions and interpret information on the fly, which means much of an examiner’s technical knowledge is dependent on the type and number of patent applications they have reviewed.
It is also discussed that patent examiners are not given much discretion in the early stages of their careers – supervisors and primary examiners have most of the say in what is patentable. Newer patent examiners can review patent descriptions and claims, conduct patent searches, and advocate for patent allowance, but allowance is ultimately not their decision. Patent examiners are then gradually given more autonomy and independence as they accrue knowledge and gain a sense of what should or should not be allowed. This knowledge is priceless to patent practitioners who rely on patent examiner statistics to make patent prosecution decisions.
Patent data from the early stages of an examiner’s career are often more indicative of a supervisor’s opinion than that of the actual patent examiner. Additionally, the need for new patent examiners to have their work reviewed and approved by supervisors can impact a patent examiner’s average patent prosecution times early in their careers. Patent professionals should be aware of statistical biases inherent in early-stage patent examiner data, and may want to consider looking to predictive patent metrics that account for bias as other circumstances surrounding patent examiner decisions. Currently, PatentAdvisor ETA™ is the most predictive patent prosecution metric available, which incorporates an examiner’s experience level, decision trends, and much more to produce a truly reliable patent prosecution tool.
Patent Examiner Interview: 5 Tips for Preparing
Tip #1: Make Contact Early
Contacting a patent examiner to set up an interview as early as possible is crucial, especially when a party wants to conduct the interview in person. Examiner interviews have been growing in popularity, so the more time you can allow for scheduling an interview, the better the chances are that an examiner will be available. Also, be prompt in responding to an examiner who returns your call for scheduling; USPTO best practices for examiner interviews suggest that calls should be returned by the applicant within one business day. If you must leave a voicemail, make sure that it includes all pertinent information such as availability, time zone, and contact information for alternative contacts in case the caller cannot be reached.
Tip #2: Prepare an Agenda
Whether or not the patent examiner requests one, it is always a good idea to prepare an agenda that will help explain what is to be accomplished during the interview. Agendas should contain details pertaining to any proposed amendments, relevant arguments supporting patent claims, and any other pertinent evidence. This agenda will be very useful to an examiner who can review it to better understand the intended purpose of the interview. The agenda can also help the applicant be fully prepared for the interview. Agendas should reflect discussion items included in Form PTOL-413A, filed to initiate the interview request.
The agenda should be prepared ahead of time and can be sent via email or fax to the examiner to set the expectations for focus of the interview. Sending the agenda in advance is a best practice that can be beneficial regardless of the examiner requesting it. This allows the examiner to review arguments or amendments alone and not feel put on the spot when the interview arrives. It can also help to save valuable time in your interview for discussion instead of beginning formalities.
Tip #3: Explaining Inventiveness
Most often, examiner interviews are scheduled in response to initial office actions which have declared claims as invalid or which have brought forward new prior art. Before showing up to the interview, anyone representing a patent applicant must be able to clearly explain what makes their idea inventive and non-obvious. It will be important to point out differences from the prior art on record. Applicants should also be able to communicate how the inventive nature of the technology is reflected by the proposed claims.
Tip #4: Work With, Not Against, the Examiner
It is extremely important to maintain a professional demeanor throughout the course of the interview; although the examiner may critique an argument, there is no reason to make the relationship adversarial in any way. Both parties in the conversation are simply interested in finding the best way to define an invention to improve its value through a patent. You may find that providing background on the invention and the problems it was created to solve can better support your claims. Establishing common ground is very helpful and it may help the process to find points of agreement that already exist. However, an applicant still has every right to ask an examiner for clarification on a decision and not settle for the argument that a claim is simply “too broad.” Remember, this is the examiner’s job. Although you may be frustrated with their responses, they are following important standards. The examiner can hear you, understand your reasoning, like your purpose and still not agree with your claims.
Tip #5: Don’t Forget the Applicant Summary
The USPTO requires a written record of all actions taken during the course of patent prosecution, and examiner interviews are no different. Before an interview ends, an applicant may find it useful to clarify with an examiner, who will also have to file a written report, what those reports should contain. Remember, your agenda is also subject to being included. Comments included in the summary should be tailored to succinctly note arguments made by the patent applicant, agreements established between the examiner and applicant as well as any further points of disagreement on certain claims. Detailed notes and reporting will also help the applicant as they move forward improving their patent. Start your report as soon as possible after your meeting, don’t wait weeks and forget defining information.
Patent applicants may feel an understandable amount of anxiety prior to an examiner interview. To help, the USPTO makes interview training tools available online. These are designed to help an applicant prepare for an interview, whether you are going to be in-office or over the phone.
Our own LexisNexis PatentAdvisor tools give applicants the ability to research an examiner’s record in any technology center.
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