This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
An application filed in the Patent and Trademark Office is assigned for examination to a group of patent Examiners having responsibility for the category of inventions to which the application relates. The Examiner is charged with making a thorough study of the application and all of the available public information pertaining to the subject matter of the claimed invention. It is the Examiner’s job to determine whether the invention is patentable as claimed, so the Examiner determines whether the invention is new, non-obvious, and useful. In addition, the Examiner determines whether the application complies with certain formalities and various other statutory requirements. After the initial examination is completed, the applicant is notified of the Examiner’s decision in a communication known as an “Office Action”. The Examiner may allow claims, reject claims, object to formal matters, or any combination thereof.
If an Examiner allows a claim, it means that he or she believes the claim is patentable and that a patent should be issued incorporating that claim. If the invention is not considered patentable, or not considered patentable as claimed, the claims will be rejected, and the Examiner will give reasons and cite references to explain the decision.
Examiners sometimes issue an objection, which is a refusal to allow a claim because its form is improper or because some other part of the application is defective. An objection, as opposed to a rejection, is usually easily overcome.
As stated earlier, the Examiner will inform the applicant of the reasons for any adverse action taken on the application. He or she will also provide the applicant with any information or references on which the decision is based. If the Examiner’s action is adverse in any respect, and the applicant wishes to persist in the application for a patent, the applicant must reply to the Examiner’s comments and request reconsideration. In particular, the reply must specifically point out the supposed errors in the Examiner’s action and respond to every ground of objection and rejection. The applicant may choose instead to amend the application and state how his or her amendments avoid the references or objections raised by the Examiner. After a response is filed by the applicant, the application will be reconsidered, and the applicant will then be notified of the Examiner’s decision in the same manner as was done after the first examination. On the second or after any later examination or reconsideration, the rejection or other action may be made “final.” The applicant’s response is then limited to an appeal to the Patent Office Board of Appeals (in the case of the rejection of any claim), a petition filed with the Commissioner of the Patent and Trademark Office (in the case of objections or requirements not involving the rejection of any claim), or a continuing application (discussed below).
The Examiner’s Incentives
The Patent Office evaluates its patent Examiners primarily according to the number of applications they process. Examiners, therefore, have no incentive to spend very much time on any one application, as it is to their benefit to process applications as quickly as possible. The Examiner typically does not take the time to read and study an application at length. An Examiner usually does a quick search to discover all of the relevant patents and other public information pertaining to the claims in an application. The Examiner then typically sends the applicant a letter (Office Action) rejecting the claims as being obvious in view of the material he or she has discovered during his or her search. The applicant must then respond by carefully explaining and distinguishing each cited reference, thereby demonstrating to the Examiner that a patent should be issued. This routine saves the Examiner time since the applicant has spent his or her own time figuring out why the references cited by the Examiner are not particularly relevant – instead of the Examiner taking the time to do so. Thus, it is common that claims that are originally rejected by an Examiner may be frequently later allowed after the Examiner has had the opportunity to read the applicant’s response distinguishing the invention from the cited references.
It should be noted that there are second-set-of-eyes quality checks at points in the prosecution to ensure a level of examination quality. Further, because Examiner time is at a premium due to the volume of patent applications to be addressed, it is often difficult for an Examiner to accurately identify differences between the claims and the references he or she locates that are deemed to be the closest “prior art” to those claims. As such, it is suggested that patent applicants view the examination process as a cooperative effort by the patent applicant and Examiner to (1) ensure that the Examiner has a full understanding of the invention, and (2) ensure the claims included in the patent application accurately capture the invention described in the patent application, and at an appropriate scope that does not encompass “prior art”.
The Examiner’s Expertise
Patent Examiners all possess some type of technical training, and a particular category of inventions is assigned to each examiner. Some categories are very narrow, and one Examiner, for example, may only handle applications based on the manufacture of electronic circuit boards.
Such an Examiner will thus acquire a great deal of expertise on the subject of such circuit boards. However, some Examiners are assigned a broad category of inventions to examine. This is simply due to the fact that the inventions can only be divided up into so many categories. Hence, it is very likely that such an Examiner will be dealing at times with inventions with which he or she is not very familiar. Thus, part of the application process may necessarily include educating the Examiner as to the particular problems or advantages addressed by the invention to which the application relates.
