Examination Of The Patent Application By The Patent Office

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 know 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 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).