Proposal: Training for Examiners on Compact Prosecution—Interview/Mediation Training

Proposal: Training for Examiners on Compact Prosecution—Interview/Mediation Training 1
Adam J. Gianola 2
Kilpatrick Townsend & Stockton LLP

To reduce prosecution time, the USPTO should offer additional training to examiners. Specifically, examiners should be offered advanced interview training and mediation training to properly prepare them to make the most effective use of interviews.

Holding interviews with examiners in person, via videoconference, or via telephone conference can be useful for quickly discussing one or more issues with an application and advancing the application to a final disposition, whether that be allowance or abandonment. A single interview can eliminate multiple issues that might otherwise require several written office actions and responses/RCEs to resolve.

Many examiners, particularly new ones, however, are somewhat reluctant to hold interviews and prefer to discuss issues only in writing. This reluctance may stem, at least in part, from examiners not having sufficient experience with interviews. Currently, only limited interview training seems to be available to examiners.

We propose that the USPTO expand the current interview-training program to include advanced interview and mediation training. Such training may make all examiners, and particularly new examiners, more comfortable with scheduling and holding interviews. This would improve the efficiency gains and reduction in prosecution time that are made possible by interviews.

The additional training should be mandatory for new examiners, while current examiners should be offered the opportunity to participate if desired. Credit could be offered to incentivize examiners to participate.

One focus of advanced interview training could be offering internal opportunities for real-world experience, such as simulated interviews. In this way, examiners can gain experience with limited performance pressure.

The USPTO should also offer patent practitioners the opportunity to participate in simulated interviews with examiners. Participation by real patent practitioners would allow examiners to become accustomed to facing unknown practitioners with a variety of personalities.

Advanced interview training could also allow new or inexperienced examiners to observe live interviews being held by more experienced examiners. Participating as a bystander, with no pressure put on the observing examiner, would allow the observing examiner to become more familiar with interviews without the risk of being put on the spot. Watching applicants and practitioners interact with experienced examiners would expose observing examiners to a range of interview styles and allow them to identify which techniques are effective and ineffective.

Even if an examiner does not intend to take an adversarial position in an interview, the risk of facing an adversarial applicant or patent practitioner may make the examiner reluctant to accept interview requests. Examiners may be concerned because when one party takes an adversarial position, this can pressure the other party to become defensive and result in both parties behaving antagonistically. When either or both the applicant or practitioner and the examiner becomes adversarial, the interview can become unproductive or even counterproductive, because when neither side is willing to alter its position, truly understand the other side’s position, or explore options for advancing an application, little headway will be made.

Simulated interviews can alleviate examiners’ fears of confrontational interviews by helping them become more comfortable with handling an adversarial applicant or practitioner. Additionally, mediation training could greatly benefit all examiners in this respect. Training on mediation and negotiation theory may help examiners develop the additional skills and tools needed to be comfortable and effective in interviews even when facing adversarial applicants or patent practitioners. For example, instructional materials on mediation and principled negotiation methods, such as those offered by the Harvard Negotiation Project, could teach examiners to better prepare for interviews by understanding and limiting the effects of emotions, thoroughly understanding the applicant’s position prior to the interview, developing options (before the interview) for advancing the application, and so on. Such training could better position examiners to face even a strongly adversarial applicant or practitioner, preparing them to convert an adversary into a collaborator in moving a patent application along quickly.

Advanced interview and mediation training could also improve the USPTO’s public image among examiners, practitioners, applicants, and the public. The USPTO could publicize these trainings as an effort not only to promote compact prosecution, but also to develop a more highly trained and experienced workforce. The Office could present the training as preparing examiners to collaborate with applicants to get patent applications of appropriate scope granted sooner.

In summary, examiners should receive advanced interview and mediation training to reduce prosecution time.

  1. A prior version of this comment was submitted to the U.S. Patent and Trademark Office on May 6, 2015, in response to its Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015).
  2. This comment is also supported by Kate S. Gaudry, Angel Lezak, Matthew T. Kitces, Richard B. Almon, and Thomas D. Franklin. It is attributable only to the author and indicated supporters, and does not represent the opinions or beliefs of any other individuals, companies, or organizations.