Behind the Scenes at the Patent Office: What Do Patent Examiners Do?

Every inventor wonders what happens once they file their invention and send it to the patent office. To most, the world of the patent examiner is a closed box (which can be pretty scary as they often hold the keys to the success or failure of a project), but they have an important job: protecting innovation in our society.

Originally posted on April 4, 2017 @ 5:03 am

Every inventor is curious about the process after their invention is submitted to the patent office. For many, the domain of the patent examiner seems opaque, akin to a sealed box (a notion that can be quite intimidating since they effectively determine a project’s success or failure), yet their role is crucial: safeguarding innovation within our society.

The job is quite straightforward. Additionally, patent examiners process a large amount of information on any given day. Let’s peel back the curtain and illuminate exactly what they do and why they’re so important.

What does a patent examiner do?

Determining patentability

On the most basic level, a patent examiner’s job is to review, accept, and reject patent applications. When a patent examiner receives a new patent application, their first task is to closely and carefully read the patent application with the purpose of understanding the invention specified as completely as possible.

The patent examiner must determine whether or not the patent application adequately describes the “metes and bounds,” or parameters of the invention it claims. Furthermore, the patent examiner must determine the scope of the patent application claims. Finally, once the patent examiner has determined the metes and bounds of the invention claimed in the patent application, as well as the scope of the application’s claims, they must research existing technology pertinent to the claimed invention. Now, the patent examiner can make a determination as to whether or not the invention claimed by the patent application in question is indeed patentable.

So in a sense, a patent examiner’s job is to safeguard innovation in society while also determining the degree to which an inventor can exploit that invention.

A patent examiner seeks to answer the following questions in evaluating a patent application:

  • What subject area is most relevant to the applicant’s invention?
  • What existing invention or inventions has the applicant identified in their application?
  • What problem or problems has the applicant identified with existing technology related to their invention?
  • How does the applicant plan to solve problems endemic to existing technology in their field with their invention?
  • How does the applicant plan to implement their solutions to those problems?
  • Do the applicant’s patent claims incorporate their proposed solutions?

Responding to a patent application

After a patent examiner has reviewed a patent application and determined whether the invention it claims is patentable, their next job is to respond to the patent applicant. The patent examiner must write an Office Action, which provides an analysis of any and all issues in the patent application which have a bearing on the patentability of the claimed invention. The patent examiner must issue either a Notice of Allowance or a Notice of Abandonment, according to the results of their review. They must also respond in full to the patent application’s reply to their determination.

You can get more insights into a patent examiner’s basic responsibilities from this USPTO presentation.

Becoming a patent examiner

Qualifications and specialties of patent engineers

Every patent examiner has a particular field or category of patent applications that they work with. This means that in order to be a competent patent examiner, the examiner in question must have sufficient experience in a technical field to have obtained a high level of understanding of the innovations in that field. Otherwise, how would the examiner fully understand and contextualize the technologies claimed in patent applications, and thus, be able to evaluate their patentability?

In general, patent examiners have a degree in a scientific or engineering field, particularly in one of the fields described below:

  • Engineering: Chemical, electrical, mechanical, general, civil, metallurgical, biomedical, agricultural, industrial, aeronautical, ceramic, petroleum, nuclear, or engineering physics.
  • Life sciences: Biology, microbiology, botany, horticulture, or pharmacology
  • Physical sciences: Chemistry or physics.

The USPTO especially prefers patent examiner candidates with a background in electrical engineering, mechanical engineering, and chemical engineering. For more information on patent engineer qualifications, see this website published by the USPTO.

Training to be a patent examiner

As of 2006, all newly hired patent examiners in the U.S. are required to complete a university-style training held by the USPTO’s Patent Training Academy. The duration of the training program is eight months, during which time fledgling patent examiners learn the fundamentals of patent law, practice, and examination procedure. The course of study at the Patent Training Academy includes both lectures and classroom assignments. While attending the Patent Training Academy, new patent examiners will begin looking at real patent applications under careful supervision.

What makes a successful patent examiner?

Beyond the qualifications and training discussed previously, a good patent examiner needs to have strong analytical skills, as well as the ability to communicate clearly and effectively. In an interview with Inc.com, Jordan Golomb, a former patent examiner, says the following when asked what’s required of patent examiners:

“In addition to having to know a lot about patent law, you have to know how to search. A lot of my training time was spent on searching for prior art, on learning how to look all over the world. There are a lot of places to look. You also have to be really quick at understanding new technologies. You aren’t given much time. And to round all of that out, you should be at least a decent writer.”

You can read the rest of Inc.com’s interview with Jordan Golomb here!

Further reading on patent examiners:

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