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Nervous for my first examiner interview

I know my strategy and rationale for my amendment etc just some nerves. I haven't spoken to the examiner and all I really know is he's some Chinese dude

Any nuggets of wisdom?

Don't be mean or condescending to the Examiner. That's rule #1.

I would recommend having some sort of outline that goes step by step regarding your rationale in more depth than the agenda that you probably submitted. Then just follow that. Be sure to be able to point out the paragraph or area of your spec that supports your amendment, too. Sometimes they ask. If figures show your amendment then you might want to talk to the Examiner by walking through some of them, too.

Don't expect a certain resolution. Some Examiners don't commit during the interview. They might need to dwell on your amendment, especially if it's in a more technical area. I haven't done interviews recently, but when I do I just let them know what I think, listen to what they think, etc. but I never get argumentative. At the end, I just say that I'll write down that we talked about X, but no agreement was reached.

Good luck!

You should at least know whether the examiner is a primary or not. If not, they can't allow anything without their SPE's sign-off, which usually makes them more reticent to tell you whether your amendment will result in an allowance.

I think sending an agenda ahead of time with your proposed amendment (if any) can also be productive.

Anonymous User wrote:Don't be mean or condescending to the Examiner. That's rule #1.

I would recommend having some sort of outline that goes step by step regarding your rationale in more depth than the agenda that you probably submitted. Then just follow that. Be sure to be able to point out the paragraph or area of your spec that supports your amendment, too. Sometimes they ask. If figures show your amendment then you might want to talk to the Examiner by walking through some of them, too.

Don't expect a certain resolution. Some Examiners don't commit during the interview. They might need to dwell on your amendment, especially if it's in a more technical area. I haven't done interviews recently, but when I do I just let them know what I think, listen to what they think, etc. but I never get argumentative. At the end, I just say that I'll write down that we talked about X, but no agreement was reached.

Good luck!

This. There's an art to finding a nice way of telling an examiner that they're not getting it. I've had situations where the examiner gave me a 102 on a piece of prior art he clearly just CTRL-F'ed and didn't understand the application... Even then, I submitted my response and then called the examiner and left a message saying that I just filed a response and that if they had any questions about the app or the technology that I would be more than happy to talk with them about it. I obviously waited until after they quit for the day and left a message, because that conversation is kind of awkward to have, but sometimes it's nice to kind of extend the olive branch.

When I call the examiner to schedule the interview, I usually point to the rejection (102, 103, 112) that I take issue with and what page of the rejection in particular. As Anon said... About 75%+ of the time they aren't going to commit to anything... The answer will most likely be something along the lines of "well that amendment would get around the cited art, but I would need to do another search".

Part of the problem is that the PTO is crazy understaffed... These examiners get probably less than 12 hours to read/comprehend the application (which is usually where most of the problems with the rejections stem from, IMO), do a search, and write up the rejection. It's a lot to do.

Good stuff in here, thanks Bros. What do you do if the examiner just straight up does not think there is any patentability in the invention? Or does this not really ever happen?

Successful examiner interviews are heavily dependent on establishing good rapport with the examiner. After introducing yourself and exchanging mild pleasantries, I would lead with, "Before we get started with the substantive part of the interview, I just wanted to let you know that we are more than willing to work with you on this case. Our client has indicated to us that they want an allowance, and so we greatly appreciate your thoughts on how best to reach allowance." Something like that, just express that you value their opinion and want to cooperate with them.

TLDR: stroke that shaft.

Anonymous User wrote:Good stuff in here, thanks Bros. What do you do if the examiner just straight up does not think there is any patentability in the invention? Or does this not really ever happen?

It definitely happens, but it is your job to figure out how to get the client's invention patented (unless the client chooses to abandon the application). If you hit a road block with the examiner, just say "okay thank you for your thoughts. we will revisit the specification, look for additional potentially patentable features, and submit new claim amendments / arguments directed to these additional features."

You'll do fine. Often times the examiner will lead you down a path to allowance if she/he likes working with you.

It's usually pretty casual. I like to start off explaining the technology and then describe where I am going with the amendments to make sure we are on the same page. Often, the examiner will let you know at that point if the amendments overcome the rejection. Before the interview, I also try to come up with a couple of backup ideas. If the examiner doesn't think the amendment will work, then I ask if the other ideas might help move things forward.

Anonymous User wrote:Good stuff in here, thanks Bros. What do you do if the examiner just straight up does not think there is any patentability in the invention? Or does this not really ever happen?

The Examiner Interview isn't the end-all, be-all. It's just a chance to try and make sure the Examiner understands what you're getting at, and to see what you have to do/say to get him/her on board with your arguments/claims. Sometimes this even means asking, "How could I amend this to make it clearer?" (i.e., how do I have to write it to get you to sign off on it). If you don't like what they say, you can just say "Okay, great, thank you," and ignore it when you finalize the draft.

And if you're talking and the Examiner refuses to admit there's anything patentable in the application at all (which I've had happen several times; Examiners will insist the entire application isn't novel, even when their references are missing half the independent claim elements), you just either ask "Can we at least agree that XYZ is not in the references you cited already?"/"Do you already have references that you would cite for the elements that aren't in these references?" or say "Well thank you for your input; I will take another look through and see if I can make some changes based on our discussion." And then go with your better arguments in the OA. You're still getting good info, in that now you know this Examiner is going to be difficult.

Thank you very much to the above poster and everyone in here

Great stuff! Nice to hear all of your experiences

Another good trick is to get the Examiner excited about the patent. Many Examiners are much more likely to allow something if I say "Hey, it's enabling / going to enable this awesome thing, let me tell you about it!"