Patent examiner

A patent examiner (or, historically, a patent clerk[1]) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office.

Duties

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Patent examiners review patent applications to determine whether the invention(s) claimed in each of them should be granted a patent or whether the application should instead be refused. One of the most important tasks of a patent examiner is to review the disclosure in the application and to compare it to the prior art. This involves reading and understanding a patent application, searching the prior art (including prior patent applications and patents, scientific literature databases, etc.) to determine what contribution the invention makes over the prior art, and issuing office actions to explain to the applicants and their representatives (i.e., patent attorneys or agents) any objections that may exist against the grant of a patent. In other words, an examiner reviews a patent application substantively to determine whether it complies with the legal requirements for granting of a patent. A claimed invention must meet patentability requirements of novelty, inventive step or non-obviousness, industrial application (or utility) and sufficiency of disclosure.

Examiners are expected to be efficient in their work and to determine patentability within a limited amount of time. Some patent applications are easy for an examiner to assess, but others require considerably more time. This has given rise to controversy: On April 13, 2007, a "Coalition of Patent Examiner Representatives" expressed concern that

in many patent offices, the pressures on examiners to produce and methods of allocating work have reduced the capacity of examiners to provide the quality of examination the peoples of the world deserve [and that] the combined pressures of higher productivity demands, increasingly complex patent applications and an ever-expanding body of relevant patent and non-patent literature have reached such a level that, unless serious measures are taken, meaningful protection of intellectual property throughout the world may, itself, become history.[2]

Offices

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European Patent Office

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Patent examiners at the European Patent Office (EPO) carry out examination and opposition procedures for patent applications originating anywhere in the world and seeking protection in any of the member states of the European Patent Organisation. The process involves a search for existing documentation in the technical area of the application (prior art) and communication with the applicant in order to bring the application in line with the legal requirements of the European Patent Convention. For every patent application, a division formed by three examiners must decide whether the application is granted or not, and in which scope.

EPO examiners are organized in a branched structured by their technical field of expertise and examine patent applications in three official languages, English, French, and German. They are recruited among nationals of the member states and work in one of the EPO offices in Munich, The Hague and Berlin.

Candidates for examiner positions must meet certain minimum requirements:

  • EPO member state nationality;
  • degree in engineering or in science;
  • good knowledge of two languages out of German, English and French with a willingness to learn the third.[3]

Some examiners have work experience in industry, but such experience is not required.[3] EPO examiners are also reportedly required to speak three languages fluently.[4][5]

Most EPO examiners are represented by SUEPO, a trade union.[6]

United States Patent and Trademark Office

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Patent examiners at the United States Patent and Trademark Office (USPTO) examine patent applications for claims of new inventions. Examiners make determinations of patentability based on policies and guidance from this agency, in compliance with federal laws (Title 35 of the United States Code), rules, judicial precedents, and guidance from agency administrators. These determinations are appealable as a matter of right to United States district courts and then to the Federal Circuit. The decisions of the latter can be appealed to the U.S. Supreme Court, but only at the court's discretion via a petition for a writ of certiorari.

Responsibilities for a patent examiner at the USPTO include:

  • reviewing patent applications to determine if they comply with basic format, rules and legal requirements;
  • determining the scope of the invention claimed by the inventor;
  • searching for relevant technologies to compare similar prior inventions with the invention claimed in the patent application; and
  • communicating findings as to the patentability of an applicant's invention via a written action to inventors/patent practitioners.
Biweekly Production Report

Examiners are hired at the GS-5, GS-7, GS-9 or GS-11 grade levels.[7][8]

Patent examiners in the U.S. have responsibilities that are commensurate with their GS level. Promotions from GS-7 to GS-14 are non-competitive. At GS-13 they are eligible to start the "Partial Signatory Authority" program, a testing phase to see if an examiner can apply patent concepts (e.g. obviousness and novelty) and laws (35 USC). Upon passing the "Partial Signatory Program", a patent examiner is given signatory authority to sign all of their own non-final rejections and other non-final communications to applicants. After a waiting period a patent examiner may take part in an additional testing phase known as the "Full Signatory Authority" (FSA) program. When a patent examiner has passed the FSA program, they are given "Full Signatory Authority" and can sign all of their own "office actions" (e.g. allowances, rejections) without review and approval by a supervisor. Such examiners are also able to review and sign actions of "junior examiners" (patent examiners without signatory authority). Upon completion of the "Full Signatory Authority program", an examiner is advanced from GS-13 to GS-14 and is referred to as a "primary examiner".[9]

Supervisors at the USPTO are GS-15 employees who are necessarily primary examiners now called Supervisory Patent Examiners (formerly Supervisory Primary Examiners) (SPE, colloquially called "spee"). They apply for positions competitively and receive management training inside the office. They are responsible for an Art Unit of patent examiners, typically 8-15 examiners who examine cases in the same area of technology (e.g. GPS devices and aircraft are handled by different art units). Responsibilities include training new examiners, reviewing and signing office actions of junior examiners and acting as an advocate of the examiners they are responsible for to a variety of parties (e.g. other managers in the office, patent applicants and their attorneys). They are the lowest rung of the USPTO's management chain of command, and the only part of management that is paid as part of the general schedule (GS). Higher paid managers are part of the Senior Executive Service and are technically political appointees. For example, a primary examiner (GS-14) and her SPE (GS-15) are part of the general schedule and cannot be fired as part of an administration change, but the SPE's boss (a "technology center" director paid at SES-1), can be asked to resign by the president, at his pleasure.

According to the USPTO, an examiner is measured entirely by his own performance, without regard to the performance of others.[10] The two most important performance statistics are referred to as "production" (the number of applications processed in the allotted time) and "docket management" (compliance with goals for responding to applicant communications within the allotted time). Legal, technical and automation training is provided to examiners at the USPTO.

To work as an examiner at the USPTO, a person must be a U.S. citizen and pass a background investigation.[11] Examiners also must have a college degree in engineering or science.[11] The Technology Centers at the USPTO are divided into chemistry, chemical engineering, electrical engineering, and mechanical engineering, so college degrees in these areas are typically preferred. In recent years,[when?] however, new technologies have been important areas of innovation, so the USPTO employs people with training in biotechnology, business methods, geology, mathematics, and many other disciplines.

Experienced examiners have an option of working primarily from home through a hoteling program implemented in 2006 by the USPTO.[12]

A 2023 study looked into how political preferences of USPTO examiners affect their propensity to allow patent claims.[13] They found no statistically significant difference except for the case when the most politically active examiners (i.e. those who donate to political campaigns) examine software patents (i.e. in the Art Units where the examiners have the most discretion). In this case Republican-leaning examiners are more likely to issue patents than Democratically-leaning examiners.

Notable patent examiners

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Name Birth year Death year Description
Genrich Altshuller[14][15] 1926 1998 a Soviet engineer, inventor, scientist, journalist and writer.
Clara Barton[16][17][18] 1821 1912 worked at the United States Patent Office (Currently the USPTO)
Albert Einstein[19] 1879 1955 worked at the Swiss Federal Office for Intellectual Property (now known as the Swiss Federal Institute of Intellectual Property)
Thomas Jefferson[20] 1743 1826 first patent examiner of the U.S. Patent Office
Arthur Paul Pedrick[21] ? (>1918) 1976 UK Patent Office examiner and prolific inventor
Henry E. Baker[22][23][24] 1857 1928 The first person to record the work of Black American inventors, Henry E. Baker Jr. entered the U.S. Naval Academy in 1874 as only the third Black person to ever attend. He later became Second Assistant at the U.S. patent office and published several works on Black inventors and their societal contributions.

See also

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References and notes

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  1. ^ The title "patent clerk" is used for instance in Gary Stix, The Patent Clerk's Legacy, Scientific American, September 2004 (an article about Albert Einstein).
  2. ^ "Re: The Future of the Patent System" (PDF). Letter to Mr. Jon Dudas, Director, United States Patent and Trademark Office, Prof. Alain Pompidou, President, European Patent Office, Dr. Jürgen Schade, President, Deutsches Patent- und Markenamt, Mr. David Tobin, Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer, Canadian Intellectual Property Office, Dr. Friedrich Rödler, President, Österreichisches Patentamt. April 13, 2007. Archived from the original (PDF) on 2007-09-27 – via www.popa.org.{{cite press release}}: CS1 maint: others (link)
  3. ^ a b "Required profile for an EPO patent examiner". European Patent Office (EPO), retrieved on June 28, 2010.
  4. ^ European Generic Medicines Association (October 2008). "Better Patents, Better Medicines: Recommendations on How to Improve The European Patent System" (PDF). p. 3. Archived from the original (PDF) on 2011-07-10.
  5. ^ Pressman, David (2008). Patent it yourself (13th ed.). Nolo. p. 313. ISBN 978-1-4133-0854-9.
  6. ^ "Wir haben ein Auge darauf" [We keep an eye thereon]. Tageblatt Lëtzebuerg (in German). 28 December 2016. Retrieved 3 January 2017.
  7. ^ GS-5, GS-7, or GS-9 grade levels are part of the General Schedule employee classification scheme within the US government.
  8. ^ See the examiner salary table as of January 1, 2007
  9. ^ Tu, Shine (2014). "Patent Examiners and Litigation Outcomes" (PDF). Stan. Tech. L. Rev. 17: 507–517. Archived from the original (PDF) on August 12, 2014.
  10. ^ "What makes the USPTO a great place to work?", USPTO Patent Examiner Recruitment, United States Patent and Trademark Office, retrieved on June 12, 2006. [dead link]
  11. ^ a b Tamara Dillon, "Patent work: The other side of invention", Occupational Outlook Quarterly, Fall 2009, page 21.
  12. ^ USPTO Patent Public Advisory Committee 2007 Annual Report
  13. ^ Partisan patent examiners? Exploring the link between the political ideology of patent examiners and patent office outcomes. 2023. Res Policy. 52/9. J. Raffiee, F. Teodoridis, D. Fehder. doi: 10.1016/j.respol.2023.104853.
  14. ^ "TRIZ was invented and structured by Genrich Altshuller, a patent examiner for the Russian navy." in Praveen Gupta, The Six Sigma Performance Handbook: A Statistical Guide to Optimizing Results, McGraw-Hill Professional, 2004, page 278, ISBN 0-07-143764-9
  15. ^ "In 1946, a 20-year-old Soviet patent clerk in Russia named Genrich Altshuller..." in Peter Middleton, James Sutton, Lean Software Strategies: proven techniques for managers and developers, Productivity Press, 2005, page 159, ISBN 1-56327-305-5
  16. ^ "Clara Barton, the founder of the Red Cross, held a regular civil service appointment as a patent clerk as early as 1854." in B. Zorina Khan, The Democratization of Invention: patents and copyrights in American economic development, 1790-1920, Cambridge University Press, 2005, page 136, note 25. ISBN 0-521-81135-X
  17. ^ "Called the “Angel of the Battlefield,” Clara Barton was a former teacher and patent clerk..." in Alan Axelrod, The Complete Idiot's Guide to the Civil War, Alpha Books, 2003, page 147, ISBN 1-59257-132-8
  18. ^ "Clara Barton, a former teacher and patent clerk, ..." in Fred D. Cavinder, More Amazing Tales from Indiana, Indiana University Press, 2003, page 79, ISBN 0-253-21653-2
  19. ^ Thomas P. Hugues, Einstein, Inventors, and Invention in R. S. (Robert Sonne) Cohen, Mara Beller, Jürgen Renn, Einstein in Context: A Special Issue of Science in Context, Cambridge University Press, 1993, page 25, ISBN 0-521-44834-4
  20. ^ Thomas T. Gordon, Arthur S. Cookfair, Patent Fundamentals for Scientists and Engineers, CRC Press, 2000, page 13, ISBN 1-56670-517-7
  21. ^ Healey, Tim (1983). Extraordinary Inventions. Reader's Digest Association Limited. pp. 44–46.
  22. ^ Baker, Henry E. (January 1, 1917). "The Negro in the Field of Invention". The Journal of Negro History. 2 (1): 21–36. doi:10.2307/2713474. ISSN 0022-2992. JSTOR 2713474.
  23. ^ Baker, Henry E. (1913). The Colored Inventor: A Record of Fifty Years. New York City: The Crisis Publishing Company.
  24. ^ Baker, Henry E. (1902). "The Negro as an Inventor". In Daniel Wallace Culp (ed.). Twentieth Century Negro Literature; Or, A Cyclopedia of Thought on the Vital Topics Relating to the American Negro. Naperville, Illinois; Toronto: J.L. Nichols & Company. pp. 398–413. ISBN 9780598621122.
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