Often, a face-to-face discussion can help two parties resolve a sticky dispute. In patent prosecution, the patent applicant can request to sit down interview with an examiner to discuss the examiner's rejections. See 37 CFR 1.133. The interview can be face-to-face or via telephone or even video conference. Law firms located across the street from the PTO tend to tout the value of examiner interviews while those outside of DC tend to downplay their significance.
I recently created a database of about 17,000 patent applications filed 2000–2005. For each of those applications, I also have a listing of the prosecution history that indicates the timing of any examiner interview. I used this data to consider the effectiveness of examiner interviews. Note two important caveats: I did not look at the underlying documents in the file wrapper, and my data does not distinguish between interviews in person and those done at a distance.
The results: Overall 18% of applications were associated with an examiner interview. I broke the data into two groups.
Early Interviews: In what I call the "early interview" group are applications where the examiner interview took place prior to the mailing of any final office action. Applications in the early interview group had the same grant rate as those that did not have an early interview (70% grant rate of terminated cases). However, those with an interview tended to stay pending longer, and be more likely to have an RCE in the file history.
Late Interviews: In what I call the "late interview" group are applications where an examiner interview took place after a final office action was mailed. Applications in the late interview group had a much higher grant rate than did applications where a final action was mailed but the case was not subsequently interviewed. Here, 74% of those in the late interview group were allowed as compared with only 60% other applications where a final action was mailed. (+/– 3% at 95% CI).
Interviews by Organization: The table below looks at the top twenty filing organizations (as listed in the application correspondence) in my dataset based on the number of applications filed 2000-2005. For each organization, the table lists the number of applications that were interviewed, number of issued patents, percent of cases interviewed, and the percent of cases patented. (Note, this percent of patented cases includes still pending cases in the calculation instead of only terminated cases and is consequently lower than the rates reported above). Although these are organizations who filed the most applications, readers should note that they represent less than 20% of all filed patent applications.
|
Organization |
Number of Applications in Database |
Applications with Interviews |
Number of Issued Patents |
Percent of Cases Interviewed |
Percent of Cases Patented |
|
OBLON SPIVAK |
374 |
107 |
241 |
29% |
64% |
|
SUGHRUE MION |
248 |
35 |
150 |
14% |
60% |
|
BIRCH STEWART |
210 |
46 |
138 |
22% |
66% |
|
HEWLETT PACKARD |
190 |
26 |
91 |
14% |
48% |
|
OLIFF BERRIDGE |
172 |
60 |
124 |
35% |
72% |
|
Harness Dickey |
171 |
37 |
92 |
22% |
54% |
|
FOLEY LARDNER |
153 |
25 |
93 |
16% |
61% |
|
KNOBBE MARTENS |
138 |
27 |
73 |
20% |
53% |
|
NIXON VANDERHYE |
138 |
21 |
82 |
15% |
59% |
|
FISH RICHARDSON |
136 |
30 |
74 |
22% |
54% |
|
FINNEGAN HENDERSON |
129 |
18 |
68 |
14% |
53% |
|
MCDERMOTT |
119 |
14 |
80 |
12% |
67% |
|
Blakely Sokoloff |
115 |
15 |
65 |
13% |
57% |
|
STAAS HALSEY |
109 |
21 |
60 |
19% |
55% |
|
FITZPATRICK CELLA |
108 |
19 |
74 |
18% |
69% |
|
TOWNSEND |
108 |
22 |
65 |
20% |
60% |
|
ANTONELLI TERRY |
101 |
12 |
68 |
12% |
67% |
|
PHILIPS IP |
93 |
9 |
54 |
10% |
58% |
|
YOUNG THOMPSON |
92 |
12 |
50 |
13% |
54% |
|
WENDEROTH LIND PONACK |
91 |
22 |
57 |
24% |
63% |
