A patent examiner is an employee at the USPTO who will review your patent application and ultimately decide whether your patent application will be granted as a patent. It’s very important that you keep a good relationship with them. Never be antagonistic with them. If you need help repairing your relationship with your examiner, it may be time to retain a patent attorney.
Their day to day work includes conducting a search for prior art, reviewing claims, conducting interviews with applicants, and determining whether the invention is novel and non-obvious. Their key communications with applicants are in the written format and include issuing Office Actions, where they outline any objections or rejections, and Notices of Allowance, which indicate the application has been approved.
Working with the Examiner
The patent examination process is designed to be cooperative, not combative. Examiners are there to help ensure the integrity of the patent system by granting patents to novel and nonobvious ideas. In my opinion, most examiners do a good job reviewing applications and being calling balls and strikes on whether to grant the patent.
Some inventors are very antagonistic with examiners. It doesn’t help the situation. In most situations, it’s not the examiner, it’s the inventor. The biggest misunderstanding that inventors have is with the Broadest Reasonable Interpretation. Get this right and you can start to understand why the examiner is rejecting your application.
In my experience, the best approach is to seek to understand the examiner’s perspective first before trying to be understood by them. I’ve found that this approach fosters a collaborative environment and can lead to better outcomes. Engaging in open communication, genuinely understanding any concerns raised, and responding thoughtfully can lead to a smoother path toward allowance. Since examiners have significant power over the application outcome, working constructively with them can save time and effort while improving the chances of securing a patent.
Role and Responsibilities
- Understanding the Invention: Examiners start by thoroughly reviewing the specification, claims, and drawings to understand what the applicant is claiming at their invention. This requires good technical understanding and familiarity with the relevant field on their part.
- Conducting a Prior Art Search: Examiners search for “prior art” — existing knowledge, publications, patents, or products — that could impact the novelty or obviousness of the invention. If relevant prior art is found, it is documented in an Office Action for the applicant’s review and response.
- Evaluating Patentability Criteria:
- Novelty: Ensuring the invention hasn’t been previously disclosed.
- Non-Obviousness: Confirming that the invention isn’t an obvious improvement or combination of prior art.
- Conducting Interviews with the Applicant: Examiners often conduct interviews with applicants or their representatives to clarify issues, discuss objections, and explore potential amendments to the claims. These interviews provide a direct line of communication and can help streamline the examination process. This is all part of trying to work cooperatively with the examiner.
- Issuing Office Actions: Examiners send official communications, known as Office Actions, explaining objections or rejections. These may include issues with novelty, claim language, or formalities, and provide an opportunity for the applicant to respond with amendments or arguments. If each objection and rejection is overcome, then you will get your patent.
- Reviewing Applicant Responses: After receiving an applicant’s response, examiners re-evaluate the application, often engaging in multiple rounds of review. If the response resolves the issues, the claims may be approved and a notice of allowance issued. Otherwise, a Final Rejection may be issued, limiting options for further argument within the examination phase unless a request for continued examination is filed.
- Granting or Denying Patents: Once an examiner determines that the claims meet all requirements, a Notice of Allowance is issued, signaling that the patent will be granted upon payment of the issue fee. If issues remain unresolved, the examiner may issue a Final Rejection, and the applicant can then appeal to the Patent Trial and Appeal Board (PTAB) or file a Request for Continued Examination (RCE).
Levels of Examiners
- Examiner: Entry-level examiners handle simpler applications as they learn the examination process. All of their work, including prior art searches, claim evaluations, and Office Actions, is closely reviewed by their Supervisory Patent Examiner (SPE) to ensure quality and consistency. This oversight allows the examiner to build expertise under guidance.
- Primary Examiner: With experience, an examiner will become a Primary Examiner, which grants them the signature authority to approve applications for allowance independently without the SPE reviewing each decision. The Primary Examiner handles more complex cases and is trusted to make allowance and rejection decisions based on their own judgment.
- Supervisory Patent Examiner (SPE): SPEs do not typically review individual applications directly. Instead, they manage Art Units, overseeing the work quality of both Primary Examiners and entry-level Examiners within their team. SPEs ensure consistency in examination practices, provide mentorship, and address procedural or technical questions that arise within the unit.
Background and Specialization
Most examiners hold degrees in technical fields, such as engineering, biology, physics, or computer science, which aligns with the technology areas they examine. Examiners work within Art Units, specialized groups focusing on distinct technology areas, like biotechnology, electrical engineering, or mechanical systems. This means your application is reviewed by a specialist with deep expertise in that particular field, not by a generalist, which brings both technical understanding and focused experience to the review.