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Patent Examiners – Friend or Foe?

Tim Zarley \ December 18, 2018

What is a Patent Examiner? The Patent Office employs many people who have different backgrounds, experience, and roles. Most prominent in the prosecution of a patent application are patent examiners.

Patent examiners are individuals who conduct an initial review of your patent application and have the authority to determine if your application meets the requirements for allowance. 

Each patent examiner has a specific technical background, has received training in patent law and Patent Office procedure, and may or may not be trained as a lawyer.

An examiner will review your application to make sure all technical requirements have been met and will compare your application to earlier filed patents, publications, and articles. Based upon this comparison, the examiner will determine if your claimed invention has utility (works), is novel (new), and is not obvious (provides an improvement).

Most often, an examiner will initially reject your application for various reasons which are followed by a back-and-forth negotiation (known as patent prosecution) between the examiner and an experienced patent attorney. Unlike most negotiations, the prosecution process is not designed to be adversarial. Instead, the examiner and patent attorney work together to agree upon claim language that distinguishes your invention from other inventions already known.

The manner in which examiners express themselves may seem stand and at times ridiculous to lay people, but an experienced patent attorney recognizes that examiners are simply interpreting words (claim terms) by giving the terms their broadest possible meaning.

Examiner Interviews

During prosecution, a patent attorney can request and schedule an interview or phone conference with the examiner. An interview can be of value to obtain a better understanding of issues an examiner may have that are preventing allowance. The interview also provides an opportunity for the patent attorney to provide explanations and suggest changes and solutions. Sometimes, an examiner may propose changes, or even suggest language, that might be acceptable and lead to allowance.

While at times it may seem that an examiner is standing in the way of obtaining a patent, in reality, they are a friend who is helping to make sure you patent will stand up to invalidity challenges down the road.

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