Examiner Interviews: Don’t Argue

An examiner interview is the best tool available to progress patent prosecution. Examiner interviews provide an avenue to quickly clear up misunderstandings, explore options, and reach resolutions. By the time I left law firm life to work in-house, I was interviewing nearly every Office Action. Over the years, I refined a style that was very effective, so much so that a partner once asked me how I was getting such good results, but at the time, I could not articulate what exactly I was doing or why it worked. In retrospect, I was successful because I argued less and negotiated more, but that only became apparent after reading the excellent negotiation book, Never Split the Difference, by Chris Voss.

1. Set the Stage

Lawyers are intellectuals educated and trained in effectively crafting and presenting legal arguments. As a result, they tend to think of examiner interviews as a battle of wits with the goal of showing the examiner the error of their ways—but doing so is a mistake.

Examiners are generally scientists and engineers, not lawyers. Presenting nuanced legal arguments to an examiner is often fruitless because the examiner does not speak that language and is unlikely to understand, with confusing case law that only seems to get more confusing. However, examiners are technically adept and technical arguments may be persuasive, so the first point of order is to make sure both parties are speaking the same technical language.

I suspect many patent prosecutors already do this, but start the examiner interview with a brief overview of the technical subject matter of the application and claims. A number of examiner interviews were over before they even began because the examiner realized they had misunderstood a crucial feature of the invention. This also prevents the risk of falling into a neverending circle of talking past one another.

2. Extreme Anchor

Examiners, like everyone else (yes, you), do not think intellectually, they think emotionally. In negotiations, an extreme anchor is usually an extremely low or extremely high offer to make the actual offer seem more reasonable by comparison.

Start the interview by bending the examiner’s reality with an extreme anchor – an argument without amendments. If the argument is stronger, take more time (and hopefully convince the examiner), and if weaker, take less. If you only have weak arguments, make them as long as they pass the “straight face test,” and fully expect to lose (although you might get lucky). By starting with only arguments, claim amendments seem more reasonable by comparison and obtaining broader scope is more likely. If instead you lead with a claim amendment, the examiner may push for narrower scope.

For the examiner interview agenda, unless my arguments were really weak, I would normally only list the independent claim to strengthen the extreme anchor, even if I expected to discuss dependent claims. I would also include a brief overview of the invention, the prior art, and the arguments, but generally shorter was better because as an agenda the purpose is to notify, not persuade.

3. Ask for Help

Despite how attorneys may sometimes feel, examiners are not the enemy. They are not goalies trying to stop any invention from allowance. They are referees ensuring inventions have the right scope before issuance. They are an adversary if you treat them like one. Don’t. Avoid a showdown and the conversation will be far more productive.

If the examiner rejected my argument, I would follow up with something like, “It seems like you understand the distinction we are trying to make, but are uncomfortable with the wording. How would you recommend we amend the claim to satisfy your concerns?” This was an accidental stroke of genius but I did not appreciate the significance until it was spelled out for me in Never Split the Difference (which I recommend reading for a more in-depth analysis as well as other tips and tricks).

Examiners are naturally suspect and inherently cautious when dealing with attorneys because they feel like they are being duped or deceived. Their natural inclination is to say no to everything, leaving the attorney on a frustrating guess and check mission. “What about our argument that –” “No.” “Maybe we amend to say –” “No.” “What if we took part of dependent claim –” “No.”

Asking examiners for help drops their active resistance to what the attorney is saying. A calibrated “how” question is open-ended and encourages discussion, inviting an examiner to solve the problem they created (i.e., the rejection) rather than leaving the attorney stumbling in search of a way out. The vast majority of times, examiners were more than willing to offer a solution or at least a direction because being asked for advice signals that their opinion and intelligence are respected and valued. I only had one or two examiners refuse to engage, insisting that was not their job, but normally asking an examiner for help shifts the dynamic from an argument between adversaries to a collaboration between colleagues.

4. ‘Collaborate’

Often, the claim amendment the examiner proposed was . . . bad. If it was good, we took that and moved on, and occasionally the examiner’s suggestion was broader than the claim amendment I had in mind. Most times, the examiner’s proposed amendment was overly narrow, painfully clunky, or completely irrelevant, but that served as the foundation for further discussion. For example: “Interesting. I see where you’re going with that, but what if we revised to this instead?”

For suggestions that were close to the mark or in the right direction, I would refine the language with the examiner. For suggestions that were farther off, I might say that the client probably would not accept that claim scope and ask for other ideas. Or I might say that the examiner’s idea was interesting and then propose something else that was completely unrelated, which sounds potentially off-putting but the examiner was normally receptive because I was “building” off their idea. With me as a guide, we were working together to find a suitable resolution and the examiner was far more likely to find one as a partner in that effort.

5. Soft Commit

After we reached agreement on a claim amendment, or once it seemed like we were closing in on one, I would offer that, “I know you may need further search and consideration, but I just wanted to tentatively confirm that these claim amendments would overcome the current rejection(s).” Examiners have commitment issues, especially when put on the spot, so leave the exit door open. This is kind of like offering free returns, which is an effective business strategy because so few people do it. Once we agreed on a path forward, even tentatively, an examiner was very unlikely to maintain the rejection because they would have to make a “return,” which means rejecting themselves on their own “proposed” solution.

The examiner might find new prior art for a new anticipation or obviousness rejection, but we almost always overcame the previous rejection, which means we almost always made progress, and faster than we would have by just filing responses. I had a few examiners that backtracked and maintained the rejection, but if they did, most were apologetic and eager to find an alternative solution. Some were not, which typically meant we were headed for appeal.

Using the above strategy, I was able to effectively and efficiently overcome rejections while maintaining broad claim scope with a pretty thin prosecution history. As noted above, the examiner interview agenda typically only included the independent claim (with maybe one or two dependent claims) as well as a brief overview of the invention, the prior art, and our arguments. The Office Action response was pretty thin as well, rehashing arguments and amendments already discussed in the interview and which the examiner already agreed would overcome the rejection. There was little left to discuss.

After the examiner interview, you may find that the claim scope the examiner agreed to is unacceptable to the client. Or you may feel that the examiner is being so unreasonable that engaging with them is unproductive or even impossible. There may be circumstances where an appeal is inevitable, and I have unfortunately filed my fair share of appeals. But conducting examiner interviews, especially as outlined above, provided much better options and a quicker resolution.

If you want broader claims at a reduced cost with more streamlined prosecution, conduct examiner interviews at every opportunity. But don’t argue. Negotiate.

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