Rethinking the Role of the Patent Examiner: Friend or Foe
Upon filing your patent application, it is first reviewed for formalities (i.e. correct font size for reference numerals on your drawings, margins, etc.) by the Office of Initial Patent Examination. The first thing you will receive is your Filing Receipt and you may also receive a Notice to File Corrected Application Papers to correct any deficiencies in your application. These deficiencies are typically easily resolved. Once you have filed the appropriate corrected application documents, you will receive an updated Filing Receipt and your application will be assigned to a Class/Subclass and a Technology Center (Art Unit), depending on the nature of the invention. Once your application is assigned to an Art Unit, it is then assigned to a Patent Examiner and will be taken up for examination in due course.
One of our Founding Fathers and our third U.S. President, Thomas Jefferson, was the first Patent Examiner. Jefferson was reluctant to hold the position of Examiner since he was, originally, philosophically opposed to the granting of patents because he considered it an unfair monopoly to an inventor. However, he would later become more favorable to the granting of patents when he discovered the power they had to encourage innovation. Because of his beliefs and what duties were required of him as a Patent Examiner, Jefferson made a policy that encouraged invention but restricted what could be patented. His system remains the basis for our patent system today.
The role of a Patent Examiner is to issue only valid patents by making appropriate objections, reasonable rejections, and aiding the Applicant in identifying allowable subject matter in his or her application. Patent Examiners are well versed in their fields and their daily work involves scientific expertise and analytical research, as well as the legal aspects of intellectual property.
Patent Examiners must have a college degree in either engineering or science. The Technology Centers at the USPTO are divided into chemical engineering, mechanical engineering, and electrical engineering. Because of new technologies, the USPTO also employs people with training in biotechnology, business methods, geology, mathematics, and many other fields.
Patent Examiners act as advocates for the public and serve as protectors of public interest with respect to intellectual property. The patent application process is not adversarial, but rather a cooperative investigation between an Examiner and an Applicant. This concerted effort helps to ensure that an Applicant receives a valid and enforceable patent.
Patent Examiners also serve as judges on patentability with respect to inventions claimed in a patent application. An Examiner determines whether an application is adequate to define the claimed invention and determines the scope of the claims. The Examiner will then search U.S. patents, publications of patent applications, international patent documents, and other available non-patent literature to see if the claimed invention meets the requirements of being novel, useful and non-obvious to one skilled in the art.
To determine patentability, a Patent Examiner compares the patent application with the prior art. While Applicants (and attorneys) have a duty of candor to disclose prior art references that are material to patentability, Patent Examiners conduct their own prior art searches, primarily via full-text or bibliographic databases of patent documents and scientific and technical journals.
Once the Examiner has found relevant prior art, he then compares the patent application against each reference uncovered in order to determine patentability of the application. He will then issue an Office Action, making appropriate objections to the application (for instance, if the specification does not support the claims) and rejections of the claims based upon obviousness or unpatentability over the prior art. The Applicant then has an opportunity to respond to the objections and/or rejections in order to overcome them. Frequently, an Examiner will issue more than one Office Action and the Applicant must respond to each Office Action or the application will become abandoned.
Although a Patent Examiner’s role is non-adversarial, during the prosecution of a patent application, an Applicant for a patent, frustrated by the long and arduous patent application process, may feel that the Examiner is seeking to ensure that their patent application never issues as a patent. However, the Examiner is actually seeking to ensure that, if the application does issue as a patent, it is a valid and enforceable patent that was thoroughly examined prior to issuance, as would be reflected in the application’s file history, which will be reviewed by the Court in any patent infringement or unenforceability litigation.
Keeping in mind that the end goal of your patent application is for your issued patent to be valid and enforceable will help an Applicant to appreciate the efforts of the Patent Examiner during the application process.