June 10, 2020 Feature

Examining the Examiner

Rebecca G. Rudich

©2020. Published in Landslide, Vol. 12, No. 5, May/June 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Few of the items in the patent practitioner’s tool kit can be as effective and transformative as the examiner interview. The U.S. Patent and Trademark Office (USPTO) Manual of Patent Examining Procedure (MPEP) calls “[d]iscussions between an applicant and an examiner . . . often indispensable to advance the prosecution of a patent application.”1 A survey of applicants presented by the USPTO in June 2015 suggested that 98 percent of the applicants questioned felt that an interview was at least somewhat useful in advancing prosecution.2 That same survey bears out that the number of hours examiners collectively spent interviewing applicants has increased over time.3

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