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Improving the Examiner Interview with a Little Psychotherapy

March 23, 2017

Wandering through the aisles of iTunes for interesting podcasts, I came across several on psychotherapy. Wow, I thought to myself; I can sure use these! Many of them are hosted by women who have nice voices and who interview other women who also have nice voices. They are always animated, sympathetic, and reassuring during the interviews, and respond to each other with “yah, that’s so true!” I wondered if psychotherapy might be helpful in patent practice. And could psychotherapy sessions be a business deduction?

Take, for example, the examiner interview. Patent attorneys interview patent examiners during the prosecution of a patent application, typically after the examiner has described its shortcomings in an office action and before the attorney has responded.

Why would psychotherapy be any help when interviewing a patent examiner? 

Well, for starters, the attorney’s client, the inventor, has just been told her brain child is a dud.  The client expects the attorney to defend the brain child from this obvious bureaucratic myopia by telling the examiner he’s a dud.  The examiner knows what is coming and is not really looking forward to it.  Moreover, attorneys inflame an ancient hostility in engineers towards lawyers.  Patent examiners are engineers and patent attorneys were engineers who traitorously descended to the dark side.  The whole interview is a pulsating sewer of interpersonal conflict.  [Yah, that’s so true!]

The US Patent and Trademark Office has a document available through its website at www.uspto.gov called “Interview Best Practices.”  This document is filled with sound tips, but nothing at all about mental illness or psychotherapy.  Nonetheless, I was convinced I was on to something, so I took a deep psychotherapeutic dive, in Wikipedia. 

I came across dialectical behavioral therapy (“DBT”). DBT is a technique for emotional problem solving in which different points of view are synthesized.  Pay dirt city!  Effective DBT requires four basic skills: interpersonal effectiveness, mindfulness, emotional regulation, and distress tolerance. 

The skill of interpersonal effectiveness uses a technique called “active listening.”  This technique is also used in legal mediation, another area where emotions often run hot.  In active listening, the listener rephrases what the speaker says, but without agreeing, so that the speaker can confirm that the listener understood what was said and what was meant.  Importantly, in an emotion-laden discussion, active listening validates and reassures the speaker.  In an examiner interview, the attorney could say to the examiner, for example, “I understand you are telling me that the prior art shows that the head bone is connected to the neck bone.  I see that point, and I would agree with you that our patent claims would not be patentable if that’s what they say.  Let’s both look again to see if they do, or how they might be misconstrued in that way, and how we might amend them to make their meaning clear and avoid that misconstruction.”

The skill of mindfulness requires that the attorney conducting the examiner interview to be mentally present, aware, and non-judgmental.  In a world full of distractions and deadlines, even the act of showing up at an examiner interview in a calm, focused, and non-judgmental manner is challenging for advocates.  A little quiet time just before the interview, without distractions, just to give you a few moments to breathe and center yourself, would help a lot.

Emotional regulation is especially difficult for the inventor of the brain child. Preparing the client and deciding how that emotion can be regulated, and perhaps constructively used, may yield an emotionally-regulated way to urge the attorney and examiner to work together to find a solution to an impasse.    

In dielectic behavioral therapy, a therapist helps the patient synthesize between different points of view.  In an examiner interview, the goal is a patent that is valid and provides meaningful protection for the invention.  Those are competing objectives.  The patent attorney can help the client achieve her objectives by setting limits on what claim amendments will not work for the client, and by being open to suggestions as to amendments that accomplish the client’s objectives within those limits.  The attorney should remain mindful, non-judgmental about the examiner’s views and motives, and open to alternate solutions but also willing to walk away if no solutions are apparent.

As crazy as it might sound, a little psychotherapy can improve the examiner interview.  But please get your psychotherapy training from someone who knows more than can be gleaned from Wikipedia.  [Yah, that’s so true!]

 


Mike Mann is a member (partner) of Nexsen Pruet, practicing with the Intellectual Property Law Group. He is also intent upon increasing the intellectual property of Nexsen Pruet and others by frequently speaking on intellectual property topics and developing new ways of looking at IP issues.

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