Aggressive and effective examiner interviews during patent examination can significantly reduce software patent costs. Patenting a software invention can be costly, with significant research, document preparation, and review costs. One of the most expensive aspects of patenting a software invention is the prosecution or examination process. This can stretch over many years and cost much more than the initial preparation of the application. However, the examination process can be greatly accelerated through effective examiner interviews.
Examiner interviews can start before the first action from the examiner. If an application has no more than three independent claims and twenty total claims, one can request to have a pre-examination interview. The applicant must electronically file a request for an interview before the examiner files an office action. Ideally, the interview should be requested when the examiner first takes up an application to exert the most influence over the direction of the examination lam bang dai hoc.
In response to the request, the examiner will prepare a pre-interview communication. The communication will list prior art references that may be used against the application and likely rejection criteria. This gives the applicant an opportunity to prepare arguments and examples to educate the examiner about the function of the invention and its distinctions when compared with the prior art. These can then be discussed with the examiner to help inform the examiner in preparing the first action. While most applications are still rejected in the first action, the allowance rate for first actions is still three times higher than without a pre-examination interview. And subsequent office actions are usually reduced.
Interviews are even more important when responding to an office action. The interview allows a dialog between the applicant and the examiner, aiding both in quickly understanding the position of the other and beginning to explore solutions for resolving differences. An interview should be held each time an office action is issued if there are substantive issues that remain to be resolved.
I prefer to schedule an interview as soon as I receive an office action, when the patent application claims and prior art are still fresh on the examiner’s mind. After reviewing the examiners arguments and the cited art, I prepare short summaries of the invention, the cited art, and brief highlights of the differences between the two. Being concise is important because examiners have limited time to prepare for each interview. I typically also prepare one to three possible amendments for discussion. The summaries and amendments are usually no more than a page and a half in length. I forward these to the examiner and arrange for an interview.
During the interview, I focus on understanding the examiners point of view. The examiner often already understands my position from the brief summary that I sent prior to the interview, and raises her objections in terms of the summary. With a knowledge of the examiner’s thinking, I can then educate where there is a misunderstanding of technical differences or software implementation details. More importantly, I can involve the examiner in crafting a solution that we are both committed to and that can be used to win quick allowance for the application. If there are open questions at the end of the interview, I will often schedule a brief, follow-up discussion to resolve those questions.
By aggressively engaging in a dialog with the examiner, the number of office action/response cycles for a software patent can be significantly reduced. The interviews can take care of issues that would normally require an expensive response. As a result, patent costs are reduced while patents are issued much sooner, increasing their value.