Patent Examiner Interview Should Occur AFTER You Respond to Office Rejections

Patent attorneys are always looking for ways to achieve more efficient prosecution of US patent applications. Here’s a tip:

Conduct your Examiner interview immediately AFTER responding to the non-final rejection. If the Examiner’s feedback convinces you that further amendment is necessary, quickly enter the amendment via a supplemental response.

The advantages here are twofold:

First, the post-response interview is more productive than the conventional pre-response interview. The Examiner comes better prepared and offers more substantive feedback. The response shifts the burden back to the Examiner to take the next action. The Examiner therefore views the interview not as a chore but as an opportunity for the attorney to help them with their homework.

Second, the post-response interview provides an extra chance to amend without the need for a costly RCE. Why wait for a final rejection to learn that an amendment will be necessary? If the interview occurs soon enough after filing the response, the Examiner will almost always grant a few weeks to enter the amendment via a supplemental response.

Are you a patent attorney who uses this strategy? Are you an inventor or foreign attorney who is fed up with never-ending prosecution and costly RCEs? If yes, let’s talk.

© 2020 Patrick D. Duplessis

IP atttorney at Whitmyer IP Group LLC in Stamford, CT, USA