Experienced patent professionals know that receiving a non-final rejection from the USPTO on a patent application can often be addressed by fixing an unintentional error or by providing more detailed information. Each subsequent office action received in connection with that patent, however, correlates more strongly with the likely eventual failure of the patent prosecution effort.
Of course, one of the remedies available to a patent applicant who is encountering resistance is to request an interview with the examiner. But at what point, exactly, do you make that request?
Data available through patent data analytics tools can offer some helpful clues. For example, a look at the data for one particular art unit, Image Analysis (2624), indicates that if the typical examiner has filed two office actions on a given application but has not yet issued an allowance, the time may be right to request an interview.
Of the nearly 25,000 applications processed by the Image Analysis art unit since 2001, about 19,000 have been approved. About 27 percent of the examination processes have included at least one interview. On average, examiners filed 1.5 office actions before they either issued a patent or the applicant abandoned prosecution.
USPTO Examiner Interviews: Not Foolproof, But Often Effective
A closer look suggests that requesting that interview was a worthwhile strategy for many of the applications that might otherwise have been abandoned after a rejection. Of the 6,723 applications that were the subject of interviews with an examiner, 1,970 —about 30 percent —received allowances after those interviews.
Among those that eventually received allowances after the interview, an average of 1.9 office actions had been issued before the applicant requested the interview. That is nearly triple the average of those applications that received allowances without an interview, which suggests that the decision to request the interview was a crucial factor in the prosecution effort.
The data showing the aggregate response of all examiners in the art unit is interesting, and is helpful for understanding that art unit’s typical performance metrics. But patent applicants do not deal with an art unit as a whole, so it is at the level of the individual examiner where the data becomes really useful.
Each examiner analyzes information uniquely and has a different approach to their work. Even within art unit 2624, the data shows that the various examiners’ experience with interviews and their subsequent responses to those conversations vary widely.
When to Use an Interview
One particular examiner, who eventually granted patents on just over 60 percent of the 223 Image Analysis applications she reviewed, usually filed between one and two non-final rejections before doing so. We can infer from this that she engaged her applicants in correspondence on a regular basis. The applications she processed prompted an average of 2.4 office actions before patent issuance or abandonment.
She conducted 77 interviews, an interview rate about 25 percent higher than her typical USPTO colleagues. Of those interviews, 25 resulted in the allowance of patent claims, but it is notable that those 25 patents had triggered an average of three office actions each before the fateful interview.
Though her allowance rate on interview applications was roughly half of her overall allowance rate, the data still suggests that this examiner was often amenable to persuasion during an interview, even after written arguments had failed to convince her of an invention’s patentability.
Use of this data allows you to make better strategic decisions when deciding when to request an interview or respond in writing.