I was a Primary Examiner with the U.S. Patent and Trademark Office many years ago. Much has changed at the Patent Office since I served as an Examiner. For example, when I was an Examiner, prior art searching or patentability searching was done manually. After reviewing a patent application that I was examining, I would then go to the appropriate file room or search room for the subject matter or technology of the patent application. In the search room, there were rows of file cabinets. Each file cabinet had a stack of small drawers called shoes. I think because they resembled small shoe boxes. Each shoe was dimensioned to hold a small stack of patents. There were no U.S. published patent applications back then. Each shoe contained a chronologically ordered stack of U.S. Patents that pertained to the technology I was searching. The same shoes also contained foreign patents and published foreign patent applications. I would pull up a chair in front of the file cabinet, and then pull out the first shoe and manually thumb through the stack of patents in the shoe. This was continued until all of the patents in the file cabinet shoes pertaining to the technology that I was searching were reviewed.
Patent Office Examiners now conduct their prior art searching or patentability searching electronically, a much more efficient manner of conducting prior art searching. However, the basic process followed by the Patent Office in examining applications for patents remains the same. This article follows the path of a regular, utility patent application as it goes through the Patent Office.
When a patent application is filed with the Patent Office, either by mail or electronically, the application is first sent to the Office of Initial Patent Examination (OIPE). In the OIPE, the patent application is checked for completeness. The government filing fees for the application are collected. If the application is filed on paper, the application is scanned, converting all of the paper documents to electronic images. A serial number is assigned to the application. Basically, serial numbers are sequential numbers assigned to applications in the order they are received at the Patent Office. The application is reviewed for formalities. Does the application include a written specification? Does the application include claims to the invention? Are there Oaths/Declarations signed by each of the inventors? Does the application include drawings, where needed? The application is assigned a filing date and the application is also assigned an international class and subclass, depending on the technology to which the application is directed. The application is also assigned to a Group Art Unit or Patent Technology Center where the application will be examined, again depending on the technology to which the application is directed.
If the OIPE determines that the patent application is not complete, the OIPE will send a Notice of Incomplete Application to the Applicant, informing the Applicant of the missing parts of the application. The Notice also sets a period of time for the Applicant to respond to the Notice by providing the parts missing from the application. Once the Applicant responds to the Notice, the OIPE again reviews the application for completeness. When the application is complete, the application is then sent to the Group Art Unit or the Technology Center assigned to the application.
When the application is received in the Group Art Unit or Technology Center, the application will be sent to an Examiner in the Group Art Unit for examination of the application. The Examiner will again review the application for completeness. The Examiner reviews the subject matter of the application to determine if the application describes subject matter that can be the subject of a patent. Does the subject matter of the application have utility? Is the subject matter clearly described, and is the description enabling, meaning that a person of ordinary skill can make and use the invention described in the application from the description of the invention? Are claims to the invention made in the application definite?
The Examiner also reviews the application to determine if the invention claimed in the application is only a single invention. The Patent Office requires that a patent application be directed to a single claimed invention. If the Examiner determines that there is more than one invention claimed in the application, the Examiner then sends what is called a Restriction Requirement to the Applicant. In the Restriction Requirement the Examiner explains the determination that the application claims two or more inventions. The Restriction Requirement also requires the Applicant to restrict the application to one claimed invention. The Restriction Requirement also sets a period of time for the Applicant to respond to the Restriction Requirement. When the Applicant responds to the Restriction Requirement by selecting one claimed invention in the application to be examined, the Examiner then begins the examination of the application.
In the examination of the application, the Examiner conducts research through known prior art or known technology pertaining to the claimed invention in the application. When the research is completed, the Examiner determines if the claimed invention is novel over the known technology and is not obvious in view of the known technology. If the Examiner determines that the claimed invention is both novel and not obvious in view of the known technology, the Examiner then sends a Notice of Allowance to the Applicant. The Notice of Allowance will set forth an Issue Fee due to be paid by the Applicant in order for the application to issue as a U.S. patent, and the due date for payment of the fee. When the Issue Fee is paid by the Applicant, the application will then again be reviewed for formalities. The application will be assigned a patent number and an issue date and the application will then issue as a U.S. Patent.
However, it is very unlikely that a patent application will sail through the Patent Office and issue as a patent. Patent applications directed to certain areas of technology could take years to be examined by the Patent Office. More often than not, the Examiner handling the examination of the patent application rejects the invention claimed in the application as either lacking novelty, or being obvious in view of known technology, or both. The Examiner will then prepare and send a First Office Action on the Merits (FOAM) with a Non-Final Rejection of the application claims to the Applicant, based on the known technology found by the Examiner when conducting the patentability research.
The Applicant has at least one opportunity to respond to the Non-Final Rejection of the invention claimed in the application. In responding to the Non-Final Rejection, the Applicant can amend or change the language of the claims to distinguish the invention claimed from the known technology relied on by the Examiner in the Non-Final Rejection of the claims. Alternatively, or in addition to amending the claimed invention, the Applicant can present arguments in responding to the Non-Final Rejection that the claimed invention is novel over the known technology and is not obvious in view of the known technology. The Applicant then sends the response to the Patent Office for consideration by the Examiner.
The Examiner will then review the Response submitted by the Applicant. If the Examiner determines that the amendments to the invention claimed distinguish the invention claimed from the known technology, and/or if the Examiner is convinced by the arguments presented by the Applicant that the invention claimed is novel over the known technology and is not obvious in view of the known technology, the Examiner will then issue a Notice of Allowance for the application as discussed above.
However, if the Examiner is not convinced by the claim amendments and/or arguments presented by the Applicant, the Examiner will then again reject the application as claiming an invention that is not novel and not obvious in view of the known technology. This second rejection of the application by the Examiner is often also a Final Rejection.
At this point, if the Applicant determines that a U.S. Patent will not issue for the invention claimed in the application, the Applicant can abandon the application. Alternatively, the Applicant can still pursue a patent for the application by filing an appeal of the Final Rejection with the Patent Office Trial and Appeal Board. If the Final Rejection is not reversed by the Board, the decision of the Board can be appealed to the United States Court of Appeals for the Federal Circuit. Still further, the Applicant could file a Request for Continued Examination (RCE) together with an amendment of the application claims and further arguments on the novelty and non-obviousness of the amended claims for review by the Examiner.
The above is a general outline of the examining process conducted by the U.S. Patent Office on regular, utility patent applications filed with the Office. More information on the examination process can be found on the U.S. Patent and Trademark Office website at www.uspto.gov.
