The Patent Process in the United States
Patent applications in the United States are substantively examined by a Patent Examiner at the United States Patent and Trademark Office (USPTO). There are over 8000 patent examiners that review the applications filed with the USPTO for usefulness, novelty and non-obviousness.
As to how a patent application gets routed to a particular examiner, that procedure is based on the technology background. The Examining core at the USPTO is divided into nine technology centers. These centers include (1) biotechnology and organic fields; (2) chemical and materials engineering fields; (3) computer architecture software and information security; (4) computer networks, multiplex, cable and cryptography/security; (5) communications; (6) semiconductors, electrical and optical systems and components; (7) ornamental designs; (8) transportation, electronic commerce, construction, agriculture, licensing and review; and (9) mechanical engineering manufacturing and products. Each technology center will have a plurality of directors, operations managers, and quality assurance specialists.
Within each of these technology sectors, there is a further breakdown, by technology into what are known as Art Units. For example, the computer networks, multiplex cable and cryptography/security technology center is broken down into dozens of Art Units. Each art unit has a SPE (a Supervisory Patent Examiner) which is the most senior Examiner of the group, Primary Examiners, and Examiners.
When a new patent application is filed, the office of initial examination makes a determination as to the technology center, and in many instances the Art Unit. As this determination is made, the application is directed to the appropriate art unit, and, assigned to an examiner. The Examiner will handle matters in a particular order and has responsibilities as to different applications and matters.
Once the Examiner turns to the application, the Examiner will first determine if the application needs to be restricted. This is a fancy term that means that a patent is directed to more than one “invention”. For example, a product and a method of using the produce can be seen in some circumstances as multiple “inventions”. If more than one invention is in an application, the Examiner can send out an Office Action (the term for an official communication) requesting that the inventor select which invention to pursue at that time (all is not lost, as any other inventions can be pursued at a later stage).
The Examiner will next undertake a two pronged review of the claims that were filed in the patent application. The first prong involves a review of procedural issues in the application and also the claims. The second prong involves reviewing the claims in light of the prior art. The Examiner will make a search of the prior art. Generally, an Examiner is familiar with the prior art in his or her art unit, and, can at times, quickly undertake a search.
If the Examiner finds issues that are of procedural nature, or finds prior art, which, the Examiner believes renders the claims unpatentable due to no novelty or obviousness, then the Examiner will issue an Office Action setting forth his or her findings. The inventor has an opportunity (typically through a written response prepared in cooperation with the patent attorney) to respond to the Examiner, amending the claims, the specification, the drawings, and presenting arguments to counter the Examiner. This back and forth process can occur through multiple exchanges.
Through the Examination process, the patent examiner, the patent owners and the IP law firm will engage in an exchange of correspondence that can be seen as a negotiation process between the patent attorney and the USPTO to negotiate a scope of the patent.
If the negotiation results in agreement, then the patent will issue. If the negotiation does not result in an agreement as to patentability, the inventor may seek to appeal the decision to the Patent Trial and Appeal Board (PTAB). While most patent applications do not result in an appeal, it is important to note that decisions from the PTAB ultimately can be appealed the Federal Courts all the way to the Supreme Court of the United States.
Current statistics show that approximately 52% of patents applications are eventually granted.