Early examiner interviews save office actions

By Michael A. Koptiw // March 25th, 2019

We analyzed 53k recent patents: it takes fewer responses to get a patent when you interview the examiner on the first office action.

This is a topic I’ve been excited about for a long time.  At CRK we love examiner interviews.  Getting the examiner on the phone and talking through her issues is the best way to drive those issues to resolution and to get cases to allowance faster. We interview early and often.  We train on effective interviewing.  And we see the results in our practice.  

But when you take a first look at the statistics on interviews across all the cases and applicants before the patent office, you get a different message. As a whole, patents that were interviewed typically have more office actions than those that were not interviewed.[1] How can that be? Maybe interviews are creating more problems than they resolve? Or maybe, it’s just that interviewing is often a last resort for many patent practitioners. Perhaps, it’s only once a patent attorney is a few office actions into the case and gets stuck before he picks up the phone.

So, we looked to see if there was a difference when a case is interviewed at the first office action.  Using fifty-three thousand recent patent applications, we normalized for examiner differences and compared cases with interviews on the first office action (i.e., before the applicant’s first response) vs. all other cases. And there is a statistically significant difference in the average number of office actions it took to get a patent.[2]  The cases with interviews on the first office action had about 10% fewer actions overall.

And these interviews are even more effective with difficult examiners.  The effect of the early interview doubles the savings for cases before examiners whose typical prosecution requires a high number of office actions.[3] 

This is a pretty powerful finding because all patent portfolio managers want to get the most out of every dollar of their patent budget. Interviewing early in the process is an effective way to do that. Generally, a telephone interview with the examiner is not a significant investment in time, but when it’s done early, the issues that are most important to the examiner can be addressed sooner. And if the patent practitioner is properly prepared (say that three times fast), many of those issues can be resolved right there on the phone without costly back and forth written arguments.

Key Takeaway:  Early interviewing is an effective way to reduce the number of office actions in patent portfolios. Having fewer office actions saves legal spend and reduces pendency.  We’ve seen its effectiveness in our practice here at CRK, and it’s borne out in the data.  

If you have questions about the underlying data or statistics, please reach out to me — Mike  Koptiw at mkoptiw@condoroccia.com.

[1] Our analysis of fifty-three thousand recent patents showed that the average number of office actions for cases without an interview was 1.9.  Compare this with an average of 2.9 office actions for cases with an interview (P-value less than .001). 

[2] P-value less than .001

[3] We looked at examiners who averaged over 4 office actions to allowance here. 

Back to Blog