1. Relevant provisions
The Chinese Patent Law contains no specific provision on interviews with examiners. The Guidelines for Patent Examination provide that an examiner may invite an applicant to an interview where this would help expedite examination. An applicant may also request an interview. The examiner should grant the request if the interview would serve a useful purpose, and may otherwise refuse it.
Whether an interview takes place therefore depends on the examiner's assessment. In practice, examiners generally agree to applicants' requests only when they consider an interview necessary. They usually prefer written responses to office actions, especially on substantive matters such as novelty and inventive step.
2. Forms of interview
Interviews may be conducted face to face or by telephone. Examiners seldom initiate face-to-face interviews; telephone discussions are more common. For example, if deficiencies remain after an applicant amends the documents in response to an office action, an examiner may telephone the applicant to discuss them and suggest solutions, helping expedite examination.
An applicant may also benefit from requesting a telephone or face-to-face discussion before filing a written response. Clarifying or resolving the issues in the office action may help the examiner accept the subsequent response and proceed to grant. Alternatively, understanding the examiner's views may help avoid an immediate rejection.
3. Timing of face-to-face interviews
Generally, the first office action must already have been issued. The applicant may request an interview when or after submitting a response, or the examiner may invite the applicant where an interview is considered necessary.
4. Requirements for face-to-face interviews
The interview must take place at a location designated by the Patent Office. The examiner must not meet the applicant elsewhere to discuss the application. The examiner responsible for the application chairs the interview, with assistance from experienced examiners where necessary. If a trainee examiner chairs it, the supervising examiner must attend.
A foreign applicant must act through a patent agency, and the patent attorney must participate in the interview. The applicant may attend with the attorney. Where necessary, an inventor designated or authorized by the applicant may also participate with the attorney. Normally, no more than two people attend on the applicant's side.
5. Telephone interview examples
Example 1
In one application, the first office action raised a lack-of-support objection. The applicant wished to argue without amending the documents but was unsure whether the examiner would agree, so requested a telephone discussion. The examiner said it was difficult to decide immediately, over the telephone, whether the arguments were persuasive. As the application was only at the first-office-action stage, the applicant could submit written observations. In this case, the examiner said the application would not be rejected immediately even if the arguments were not accepted.
This illustrates that examiners may be reluctant to resolve complex issues solely by telephone.
Example 2
Examiners are often willing to discuss issues other than novelty or inventive step in detail by telephone. In one case, the first office action raised several clarity and support objections. Following a thorough discussion, the clarity issues were largely resolved. Despite a detailed explanation, however, the examiner could not determine immediately whether the support objections had been overcome.
The examiner suggested that the attorney email a written explanation of the support issues. After studying it carefully, the examiner accepted the arguments.
Practical considerations
Some matters, such as added subject matter, are subject to strict examination standards and may require internal discussion. An examiner may therefore be unable to decide them through a telephone conversation alone. A case may also be subject to quality review, and an examiner may not be certain that a conclusion reached by telephone will be accepted by a supervisor. These factors explain why some examiners still request a formal written response.
6. A face-to-face interview example
In one case, the applicant had found allegedly infringing products on the market and wanted an early grant. The applicant requested early publication and examination. After the response to the first office action, the examiner issued a second action rather than allowing the application. The applicant wished to demonstrate an actual product and explain how the invention differed from the cited prior art. We conveyed that request by telephone, and the examiner agreed to a face-to-face interview.
At the interview, we again explained the application's importance to the applicant. Using the actual product, we described the differences between the invention and the prior-art disclosure in detail. We persuaded the examiner of the invention's patentability, although the distinguishing features still had to be made clearer in the claims.
Face-to-face discussion can improve technical communication and help the examiner understand the applicant's position and wish to obtain protection. If an examiner has misunderstood the application or the prior art, detailed discussion and a physical demonstration may clarify the differences.
Compared with written observations alone, interviews can provide richer communication. Regardless of whether an interview is granted, however, the written response should analyze the differences from the prior art in detail and present persuasive reasons.
