Patent examiner

The USPTO describes the examination as a study for compliance with legal requirements, along with a search through U.S. patents, publications of patent applications, foreign patent documents and available literature, to see if the claimed invention is new, useful and non-obvious and if the application meets the patent statute and rules of practice³. The steps below follow the statutes, the rules and the MPEP.

1. Study the application and the art37 CFR 1.104(a)(1) says that on taking up an application the examiner shall make a thorough study of it and a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination is to be complete both as to compliance with the applicable statutes and rules and as to the patentability of the invention as claimed⁴.
2. SearchThe MPEP says that after reading the specification and claims, the examiner searches the prior art, and that the invention should be thoroughly understood before a search is undertaken⁵.
3. Reject, object or requireIf the examiner rejects a claim or makes an objection or requirement, 35 U.S.C. 132 requires notice to the applicant stating the reasons, together with the information and references that may be useful in judging whether to continue the prosecution⁶. In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command (37 CFR 1.104(c)(2))⁴.
4. Reconsider after the applicant's replyIf the applicant persists in the claim for a patent, with or without amendment, the application shall be reexamined (35 U.S.C. 132)⁶. The USPTO says the examiner may then send a Final Action, and that if any claims have been twice rejected, the applicant can appeal to the Patent Trial and Appeal Board³.
5. AllowIf it appears that an applicant is entitled to a patent under the law, a written notice of allowance shall be given or mailed to the applicant, specifying the issue fee (35 U.S.C. 151)⁷. The MPEP reminds examiners not to overlook the importance of their role in allowing claims which properly define the invention⁸.

See Patent prosecution for the applicant's side of this exchange.

The USPTO says examination is divided among technology centers (TCs), each overseeing assigned fields of technology and staffed by examiners and support staff³. Within a technology center, the USPTO glossary defines a Group Art Unit as a working unit responsible for a cluster of related patent art, generally staffed by one supervisory patent examiner and a number of patent examiners who determine patentability. Art units are currently identified by a four-digit number⁹.

The glossary defines a primary examiner as a patent examiner who is fully authorized to sign office actions making patentability determinations, that is, one who has signatory authority⁹. MPEP 1004 says existing practice requires the primary examiner to be personally responsible for certain actions, among them allowances, final rejections and examiner's answers on appeal¹⁰. The MPEP also refers to assistant examiners: where an assistant examiner has been in the Office only a short time, the primary examiner is to review the application thoroughly¹¹.

The EPC sets up several departments within the EPO to carry out its procedures, including search divisions, examining divisions and opposition divisions (Article 15 EPC)¹². Legally, search and examination are assigned to different departments. The search divisions are responsible for drawing up European search reports (Article 17)¹³, and the examining divisions are responsible for the examination of European patent applications (Article 18(1))².

• An examining division consists of three technically qualified examiners. Before a decision is taken, examination is, as a general rule, entrusted to one member of the division. Oral proceedings are before the examining division itself².
• If the division considers that the nature of the decision so requires, it is enlarged by a legally qualified examiner. In the event of parity of votes, the vote of the chairman is decisive (Article 18(2))².
• The EPO examines on request whether the application and the invention meet the requirements of the EPC, and the request is not deemed filed until the examination fee has been paid (Article 94(1)). If no request is made in due time, the application is deemed withdrawn (Article 94(2))¹⁴.
• If the examination shows that the requirements are not met, the examining division invites the applicant, as often as necessary, to file observations and, subject to Article 123(1), to amend the application. Failure to reply in due time to a communication means the application is deemed withdrawn (Article 94(3) and (4)), subject to further processing under Article 121 EPC^14,15.
• If the examining division is of the opinion that the application and the invention meet the requirements, it decides to grant a European patent. If it is of the opinion that they do not, it refuses the application unless the EPC provides for a different legal consequence (Article 97(1) and (2))¹⁶.