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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent Pending Made Simple podcast. I'm your host Samar Shah. And with me is Jamie. Jamie, how are you? Hey, Samar. I'm good. How are you doing? I am doing all right. I think we're gonna talk about one of my favorite topics, examiner interview. So are you ready? I'm ready. I think Examiner interviews are a great tool, so yeah, let's get into it.
Yeah, I was partially joking because I actually never used to do examiner interviews when I worked at my old firm because we never got anywhere, and every time when I worked with a partner or a supervisor, it would just evolve or devolve into like just a yelling match. So how you don't. I never got a lot of good training on how to do examiner interviews, so I've kind of developed a framework for myself that I think works.
But I'm actually also curious to get hear your perspective because you were on the other side of this, and I'm curious to see if. Some of my thoughts actually translate into reality from an examiner perspective as well. Yeah, that's interesting. I mean, I've heard stories about that before where these interviews get heated and one side or the other is like yelling at each other, and I've never personally seen that happen.
And even as an examiner, I never had that happen to me. So, but I knew, I know that these things do happen. I mean, emotions get involved. People are trying to defend their positions and they can get heated, but I've never personally had it happen to me, so that's funny that that was your experience. Yeah.
Yeah. It only hurt the client. It never helped them, at least in my perspective. Yeah. Uh, although we do things very differently now, Jamie, and I think every examiner interview that we do helps the client buy a lot, and I think we do an examiner interview in almost every single case every time we get an opportunity to do so.
What do you think? Yeah, I mean, I try to, you know, if the application is a good candidate for an examiner interview, I try to do 'em as often as I can because like I said at the top of the episode, I think they're a great tool for just kind of gauging where your examiner is at. Some examiners are really reasonable, some examiners are really difficult, and it's hard to tell just from the written communication that you receive from the patent office.
Kind of which side your examiner is on. So I think that the interviews are a really good way to figure that out. And then mm-hmm. You know, if you end up figuring out that you have an examiner that you're pretty sure is gonna be unreasonable, you wanna get that application in front of somebody else as soon as you can, which means appealing the examiner decision.
So I think interviews are a great way to help you figure that out. Yeah. I really like how you think about this, is to be outcome driven before you walk into that meeting. Right. I've always noticed. This about your examiner interview. You are trying to figure out what should be the next step after this interview, right?
Should it be a response? Should it be an RCE? Should it be in a pre-app appeal brief? So having that outcome in mind before you start, I think is a great place to be before you jump on the call. And Jamie, before we jump into what should you talk about or how you should talk to an examiner, can you maybe talk about what kind of mindset you should have, especially for our listeners who are maybe prosecuting their own application or they're very emotionally attached to their invention.
What is the right. Mindset or frame of mind or reference that you should have before you jump on the call? Yeah, I think that's a great question. To me, the point of the examiner interview is just information gathering. I don't think arguing with the examiner gets you very far. So to me, the main point of the examiner interview is to get some clarification on the examiner's position and just really, you know, listen to what they have to say and try to really understand and absorb where they are coming from.
I think once you understand. And that you'll be better able to respond to their rejections or respond to their position. So to me, that's my mindset is just, I'm just information gathering here and whatever information I gather from this interview will help me make a decision on where to proceed with the application.
Mm-hmm. So what do you think Samar? What's your, what's your head space going into an interview? Yeah. I always think about it as I wanna find some common ground with the examiner, right? And I want to do it on a. A couple of different planes. One, I wanna do it on a personal level, right? Like you just, you're more likely to reach an agreement with somebody that you like talking to, right?
Or have some rapport with. So I say, okay, well I'm gonna try to build a rapport with the examiner on a human level, right? Just like who this person is, what takes them off, or what do they enjoy about. The patent process or working in the patent office, like there's so many things you can build rapport with somebody on.
So I try to build some rapport because it makes the tougher conversations a little bit easier later, right? 'cause they're coming. But the second thing I wanna do is find common ground on an application. So when you disagree with people, it's very easy to pick out. Thing that you disagree with them about?
Right. So like really zero in, I think it's just human nature to zero in on like where the examiner is maybe wrong or where you disagree. But I kind of flip that. Usually I'm like, okay, I wanna find places where we agree on. Right. So, and then I wanna build my conversation around those. Points of common ground, things that we agree on.
'cause in any, any patent case, I think the examiner and the applicant agree on more things than they disagree on. And I think instead of focusing or starting off on that disagreement, I focus on the agreement and then work my way myself into the points of disagreement. Yeah, that's a great strategy and that's a, sounds like a great way to proceed.
Can you talk a little bit more about the building rapport? Because in my experience, the examiners are really interested in keeping the call as brief as possible. So how do you use that limited amount of time to build rapport with the examiner? Like can you give some examples about how you do that? Yeah.
I am not admittedly the best at this because I'm usually happy to just kind of move his substantive stuff. Adam, our colleague, is like expert at this, right? Like he will sometimes have a call with an examiner and that lasts one hour long, right? I've, I've never had that, but they're just like talking about so many things.
And like he just has a great way of building rapport and finding common ground with people in general, not just examiners. So this is gonna be a little bit personality driven, but I'll make some comments here and there, right? Like I'll say, oh, like if I know they live somewhere, I'm like, oh, the weather is like.
This, or if we're about to talk about a rejection, and I'll ask them like, Hey, do you see a lot of these? Or like, Hey, have you heard a lot of pushback on this? Or, I'll just make some comments here and there. Right. That like, we'll either make them like something that they will super agree with or super disagree with.
Right. And that's a great way to just have a couple of sentences about those things and a way to build rapport and being like, oh, we understand each other on a human level. Right? We're just not just a piece of argument on a piece of paper. Right. Actual human beings and we're in this together. So that's kind of try to orient people that way.
Like, Hey, we're in this thing together. Yeah. Okay. Yeah, that's great. I'm sure that's really helpful for setting the tone of the call. Yeah. Like, uh, yeah, like my favorite things to do is like, oh, do you get a lot of these? Or like, oh, I bet you've heard this argument like a hundred times. Right? Like, or, Hey, I bet this, this argument is probably very annoying to you.
Right, right, right. It's just like things that we can agree on or things that will. Maybe like they have some emotional attachment to, or Great. Great things to talk about. Yeah. Okay, cool. So then what are some things you do to prepare, like before you even get on the phone with the examiner, what are some things you might do to prepare for an interview with an examiner?
Yeah, I mean, there is the amendment. So you know, if you're gonna make amendments to the case, you want to prepare them ahead of time and send them to the examiner so they can, they have a chance to review them and formulate opinions on those amendments. So that's one thing that you should do and send to examiner ahead of time and give them enough time to review those things.
But the other big thing that I do is I just come up with arguments, right? So for every examiner interview, I'd wanna usually have four or five arguments that I can present, and they're. Along different indices or dimensions as I like to think of them. So there is the case law argument, right? So this is what a legal ca case said, and we are either analogous to that case or we are distinguishable from that case.
So I wanna have an argument. Along those lines. The second is the MPEP, the examining guidelines that examiners use to examine patent cases. I want to have support from my argument in the MPEP. The third thing I wanna think about is I wanna have support for my claim interpretation in some way, right?
Whether it's through distinguishing the claims from dependent claims. And then the fourth thing is to have support for my arguments in the specification. So I'm gonna highlight. Two or three paragraphs in the specification that I can rely on. 'cause I know we're disagreeing about this term and my interpretation is supported by these things in the spec.
So those are usually the things that I like to think about before I hop onto the interview. And then I like to usually rank them, right? So I wanna rank them based on the strength of the argument, which can help me present. These arguments. We'll talk about that later, I'm sure. But at least in my mind, I wanna rank them from strength perspective.
Jamie, what about you? Yeah. Wow. I mean, I think the cases that I work on are usually more cut and dry than, than what you do. So yeah, I mean, I usually will send examiner an agenda ahead of time, which for the most part just consists of a proposed. Claim amendment. I'll send them, send it to them and say, he, here's what I'm thinking.
Here's what I wanna talk about. So that they have time to prepare and they have time to analyze my proposed claim amendment and view of the art that they're citing or the art that's been cited in the case. So yeah, that's pretty much what I do, is just prepare a proposed claim amendment and kind of think about the arguments I wanna make as far as why those claim amendments define over the prior art.
But like I said, I think my cases are usually a lot. More simple than yours. I think you might be underselling yourself here a little bit, Jamie, 'cause I've always found you super prepared on every examiner interview that I've uh, been on with you. I think it's sometimes kind of easy to kind of wrap yourself into your own echo chamber or your own belief that you're correct.
That you can sometimes forget to poke holes in your arguments. Right? And I think you do a really good job of this. 'cause whenever you present an argument and the examiner starts poking holes in it, you're prepared with backup arguments, right? Or support, which is, I think, very important to do. One thing I'll add for our listeners is that when you send an agenda to the examiner, don't forget that whatever you send to them is part.
Of the official record of the patent. So if you make admissions on that agenda, like those admissions are attached to the record of the patent permanently. So be careful about what you send to them and if you make concessions or admissions on that agenda, that that can come back and haunt you later. So be careful about that.
Yeah, that's. That's great advice. Also, I'm assuming it's the same for pro se applicants, but before we're able to send email a proposed amendment or an agenda to the examiner, we have to file a special paper in the application that says we give permission for electronic communication. So I'm assuming that that's the same for pro se applicants that they have to do that as well.
Yeah, I think so. I don't know the exact answer, but yeah, I think their regulations about at about this at the patent office, so they would have. Follow the same rules, I imagine. Yeah. Okay. And then earlier you mentioned about having some arguments based in case law. I think that's one thing that I tend to not do because examiners, you never know if your examiner is gonna be proficient in case law or whether they're gonna care about it or not.
Some examiners are attorneys and some of them are not. And I think for the most part, the examiners rely on the MPEP, the manual of. Patent examining procedure and not so much on case law. So I kind of tend to shy away from case law. But have you had much success with that Samar? No, I wouldn't say much success, but I still like to have them on hand because I deal with a lot of.
1 0 1 cases and I especially get pulled into like the hardest cases, right? Where an additional perspective is needed In those cases, some examiners are like really aggressive about how they cite case law. So they'll lead their rejection with cases, right? Where something was found to be an abstract idea.
So if relying pretty heavily on case law, then I need to meet them where they are, right? So different examiners will have different. Comfort level with case law, and for those who are gonna use cases against you, you need to neutralize their application of that case law with your own cases, or by reading the case more carefully than they have.
So they'll say, well, your case is like this other case where it was f something was found to be an abstract idea. And I'll say, well, yes, but did you really read it? The facts of the case, you know. The underlying facts are very different, even though the words of the claims are the same. So I always wanna have those things in my back pocket.
I use it two different ways. I mean, I, you know, one is to neutralize the examiner's use of the case law, and then second is their supporting arguments, right? So sometimes like. You are kind of winning an argument, but kind of not, but like one additional data point will tip the scales in your favor. In those cases, I'll bust out the case law and be like, well, I know you're on the fence on this, but like, look at this, like the Supreme Court found this, or the federal circuit found this.
Hopefully that's enough to. Tip the balances. Yeah. Okay. That sounds good. Anything else? Yeah, no, I think that's good. Should we talk about, I have a lot of thoughts as you can tell. Yeah. Should we talk about how we, what you do when you get on a call, um, with the examiner, Jamie, what is your approach? How do you like to structure that call?
Yeah, I usually kind of start with an overview of the claimed invention, and then I might talk a little bit about the inventions or the devices or whatever that are taught in the prior art that they're citing against us. And then I will talk about sort of my overall general strategy and what I was trying to go for with the claim amendment.
And then ask, did you have time to look at the claim amendment? What are your thoughts on it? And then listen very carefully to what. They are saying and whether they agree with my claim amendment or, or don't agree with it and why they don't agree with it. That's kind of the general path I tend to take with my examiner interviews.
What about you, Samar? Yeah, I think that's a great, great approach. I try to do something similar, but I try to PR usually because I have several arguments. I wanna probe the examiner a little bit. About how strong their conviction is about various arguments, right? So one of the things that I see happen all the time with these examiner interviews is that the examiner will take lead on the, on the interview, take you to the place where their argument is the strongest, and your argument is the weakest, right?
And they will try to end the call. At that place, right? They start there and they're not a very productive call for our clients. So what I try to do is avoid getting into an argument with the examiner for as long as I can. So if the examiner starts taking control of the call and they take us to a place where we're weakest, I'll say, oh, that's a great, uh, point examiner.
What about this? Have you considered this argument? And then they'll respond and they will. Either respond with a lot of conviction or they'll respond with a very low amount of conviction. And I'm just making a note of that. And then I'll say, okay, well that's very helpful perspective. What about this examiner?
Have you considered this? And then I'll kind of gauge what their level of conviction is about those things. And I'll just keep going down the list. I'll actually avoid arguing with them for as long as possible, right? Because the human tendency is to hear them. An argument that's garbage and to just like jump on that right, right away.
'cause like you're so emotionally wound up in this thing that it's like preposterous to you that somebody could say that about your case. Like it's just totally unreasonable interpretation. But even when I hear something unreasonable, I just keep it moving and I keep probing and seeing where are the chinks in the armor, so to speak.
So I, I like to kind of present all my stuff before I decide where I wanna engage with them. And then. You can strategically engage them on one thing where you're the strongest and they're the weakest. Right? So that's how I like to think about it. Yeah, I think that's a great way to do it. And when they come back at me with something that I think is preposterous or ridiculous or just completely unreasonable, a lot of times I'll just kind of skip over that and make a mental note and think, well, we can take care of this on the written record.
I feel like I have a strong position and their position is just not reasonable. I would tend to skip over those and. And try to find something that we can agree on. Yeah, I think you do that really well, Jamie. 'cause it's so easy to get pulled into and sucked into argumentation with the examiner. Yeah.
Which is ultimately not the goal, right? Remember the goal is to find common ground where you can agree. Yeah. Yeah. That's a great way to look at it. Check your ego at the door. Yeah. Right. Yeah, and I think that also probably goes back to the part we talked about at the beginning where with building rapport with the examiner, if the examiner can make some arguments and you can agree with them or concede, then they know that you're reasonable.
And I think they'd be more willing to work with you. To try to come to a conclusion. Yeah. Right, right. Yeah. That can happen. Yeah. I think this is hopefully really helpful for our listeners. The examiner interview is a great tool and it's very helpful to just get on the call, get on the phone with your examiner and kind of try to figure out where they're coming from.
You know, not necessarily like you were talking about Samar, not necessarily get on the phone with the intent of trying to win an argument. Get on the phone and listen to them and try to really understand where they're coming from, so, okay. Yeah, we, I know we've touched on this in some other episodes, so I think it's great to have a full episode about it and how to do a useful, productive examiner interview.
Okay, thanks Samar. Bye. The Patent Strategy Podcast is recorded for informational purposes only, and should not be considered legal, business, or professional advice. We are not responsible for any loss, damages, or liability that may arise from the use of this podcast. The podcast is not intended to replace professional legal advice and should not be treated as such.
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