Every time I get an Office Action back on a client's application, I consider the power of the phone before the power of the pen.→

In 30 years of practicing patent law, that instinct has never changed.

Look, most applications get rejected at least once. That's just how this works. But three decades in, I've learned that the fastest way to get to "allowed" usually doesn't start with typing up a response. It starts with asking myself: would a quick call to the examiner get us there faster?

Turns out I'm not just going on gut feeling anymore. Juristat dug into its patent analytics database and found that interviews boost allowance rates by 9 percentage points overall — and the earlier you do it, the more it pays off. If a case gets resolved after just one Office Action, the allowance rate jumps to 97% when there's an interview on record, compared to 78% without one. Almost 95% of examiners are more likely to allow a case once they've talked it through.

So why isn't everyone doing this? Fewer than a third of applications ever get a formal interview, and most of those happen late — after four or more Office Actions, once a lot of that upside is already gone. Honestly, I think that's a huge missed opportunity for a lot of applicants.

Here's why I reach for the phone as often as I do:

It clears up what the paper can't. Office Actions are often vague or open to interpretation. A ten-minute conversation lets me ask the examiner directly what's really driving the rejection. In fact, I've had cases where the actual issue was completely different from what the written rejection implied.

I can float an amendment before I file it. Rather than guessing at claim language and waiting months to see if it worked, I can propose something on the call and get a read on it in real time.

It keeps things moving. Cases I resolve through an interview almost always skip an extra round of rejections or an RCE. That's real time and money back in my client's pocket.

But none of this works if I show up unprepared. I never call an examiner without a specific amendment or argument in hand. A vague conversation wastes their time and mine — and can actually work against you.

If your attorney isn't at least thinking about picking up the phone after an Office Action, it's worth asking why. After 30 years, I know it's one of the best tools I've got — and the data supports that.

#patentlaw #IP #patentprosecution