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ARTICLE · 22 DECEMBER 2023

Interview, Interview, Interview! Part 1: When To Interview A Case?

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Examiner interviews are a highly useful tool for not only helping the examiner to understand the invention described in the application, but also for helping the practitioner understand...

United StatesIntellectual Property
Adriana Burgy
Adriana Burgy
Stacy Lewis
Stacy Lewis
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Examiner interviews are a highly useful tool for not only helping the examiner to understand the invention described in the application, but also for helping the practitioner understand the examiner's concerns about patentability.

When to interview a case?

If many of your cases are assigned to a new examiner or one you don't know, it can be very helpful to pick one or more cases that involve representative patentability issues and schedule an interview with that examiner. By doing so, one can learn which positions of the examiner are "hard" and which are "soft." This can greatly reduce the cost of subsequent written responses since the focus can then be put on those issues most meaningful to that examiner.

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