Examination and Fees – Who Will Decide Whether I Get a Patent?
Episode #6 of the course Patent basics: for inventors and decision-makers by Clint R. Morin
Welcome to lesson six. You are over halfway there!
Last time, we discussed some of the requirements that your patent application must meet if you are going to get a patent. But who gets to decide whether those requirements are met? How are these decisions made, and what can you, as the applicant, do during the process? These are the issues we will discuss today.
Examination
Examination is the name for the process used to determine whether your patent application will be allowed as a patent. There are two parties during this process: the applicant and the patent office. If you or your company filed the patent application, you or your company may be represented by a patent attorney or patent agent. The patent office is represented by a patent examiner.
The Patent Examiner
The patent examiner is an employee with the patent office who has been tasked with ensuring that patent applications and claims meet the patent law requirements. The assigned examiner acts as a gatekeeper, and if they are not convinced that your application should issue as a patent, they will issue a rejection. There is a process in place where you can appeal the examiner’s decisions, but most patent applications are allowed or rejected based on the decisions of the assigned examiner.
Responding to the Patent Office
When you receive a communication from the patent office, you often need to respond with your own written communication to address issues identified by the examiner. You usually have a deadline, and sometimes you have fees to pay with your response. In general, your response will have an argument or explanation and/or an amendment. If you don’t respond, your application will usually be abandoned and you will not receive a patent.
Amendments: In some situations, your response can provide amendments to your patent application to fix issues or rejections identified by the examiner. Usually, these amendments are made to the claims. For example, if the examiner indicates that one or more of your claims are not novel (see Lesson 5), you may amend your claims to include details so that they overcome that rejection.
Any amendments you provide must be “supported” by your original filing. For example, you can’t make up additional details for your invention after you file the patent application and amend the claim to include those details. (You may, however, file a new patent application with those additional details.)
Explanation or Arguments: A response will usually have some explanation or argument indicating why you think you have fixed an issue (for example, by an amendment) or why you believe a rejection is wrong. In the case of a novelty or obviousness rejection, the response may explain why a technology (in a prior art reference cited by an examiner) is different than the invention described in the claims. These arguments can be fact-intensive and both technically and legally subtle.
How Does It All Work?
You can think of the examination process as a tennis match where the applicant and the examiner take turns addressing and explaining issues with a patent application. Just like a tennis volley may be short or long, examination can be a bit unpredictable. This unpredictability is partly due to the uncertainty of what the prior art will be as well as human factors. Generally speaking, there will be some back and forth before your patent application is allowed.
The tennis comparison only goes so far, however, as the examiner does not “lose” when she allows your patent, as that is part of her job. In addition to the written documents, your patent attorney or agent will also often talk with the examiner by phone or in person to discuss what might get your patent application allowed.
Takeaways
Examination circles mostly around the patent claims. A patent examiner acts as a gatekeeper to make sure your patent application meets the patent law requirements. You have opportunities to argue a point or amend during the examination process.
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Notice: This course and its lessons are not, nor are they intended to be, legal or other professional advice. Please seek the advice of a competent attorney or professional for your specific situation.
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