Chapter §11.03 Examination by the USPTO
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§11.03 Examination by the USPTO
[A] Overview
The Patent Act directs that "the Director [of the USPTO] shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor."88 As of February 2020, the USPTO employed almost 8,000 patent examiners to accomplish this task.89 An examiner is assigned to each application depending upon the type of technology involved.90
The USPTO examiner's job is to determine whether the application and the invention claimed therein satisfy the various statutory requirements for the issuance of a patent; each of these requirements is covered in greater detail in other chapters of this treatise. To summarize, however, the examiner will first study the application to understand the claimed invention. He will review the form and content of the application to determine whether it complies with the disclosure and claiming requirements.91 He will also consider whether the claimed invention falls within one of the permissible categories of potentially patentable subject matter92 and whether it is useful (i.e., possesses "utility").93
[B] Search of Prior Art
The examiner's most important and difficult task is to determine whether the invention, as recited by the claims of the patent application, is new ("novel") and "nonobvious."94 To make this determination the examiner will conduct a search of the prior art, including U.S. and foreign patents and nonpatent printed publications, and will compare what is taught by that prior art with what the applicant has claimed as her invention.95
The examiner will also consider prior art submitted by the applicant (typically accompanying an Information Disclosure Statement).96 Under certain circumstances, third parties may also submit information they believe relevant to patentability.97 If reasonably necessary to the examination, the examiner may issue a Request for Information requiring the applicant to submit information concerning matters such as information used in the invention process or used to draft the application, or "[t]echnical information known to [the] applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items."98
[C] First Office Action
Depending on the results of his search and examination, the examiner may initially (1) "allow" (i.e., approve) certain of the applicant's claims and reject others not considered patentable, or (2) (relatively rarely) allow all the claims, or (3) (more typically) reject all the claims.99 The examiner may also make "objections" as to the form, rather than the substantive patentability, of the claims; for example, in the case of improper claim dependency.100 The examiner may also request that the applicant correct matters of form with respect to the written description and/or drawings.101
The examiner will convey all of these determinations to the applicant in writing via an official document known as an "examiner's action" or "office action;"102 a sample office action from an actual patent prosecution history is provided infra.103 The office action must state "the reasons for any adverse action or any objection or requirement . . . and [provide] such information or references will be given as may be useful in aiding the applicant . . . to judge the propriety of continuing the prosecution" of his application.104 The examiner must provide essential citation information for the prior art references he cited in making rejections so that the applicant can access and evaluate the content of the references.105 When the examiner allows claims, he may optionally provide a statement of his reasons for allowance; in response the applicant may file comments on the examiner's reasons.106
Due to USPTO backlog and examiner workload, the examination process does not occur quickly. During fiscal year 2017 it took on average about 16 months after filing for an applicant to receive a first office action and about 24 months to complete prosecution.107 In response to concerns about delay in patent application pendency, the AIA added the option of "Prioritized Examination" (PE) of patent applications.108 On or after September 26, 2011, applicants willing to pay significant additional fees (in 2018, $4,000 for large entities and $2,000 for small entities) could request that their applications be placed on a prioritized examination track. Utility applications for which prioritized examination is requested had to be filed electronically and could contain no more than four independent claims. The USPTO's goal was to provide either a final rejection or allowance within one year of granting prioritized status.109
[D] Applicant's Response
After receiving the examiner's first office action, the applicant has a statutorily set period of time (maximum of six months) in which to respond.110 Failure to make a timely response means that the application will be considered abandoned.111 Assuming that the applicant decides to proceed with the prosecution rather than abandon her application, she will typically submit a written reply to the examiner's rejections.112 In this response she may make arguments for patentability in an attempt to "traverse" (i.e., overcome) the examiner's rejections.
For example, the applicant may disagree with the examiner's interpretation of her invention and/or the teachings of the prior art relied on by the examiner and argue that her application claims are patentably distinguishable over the prior art.113 She may also attempt to remove the prior art by claiming for her application the benefit of an earlier domestic or foreign priority date.114 She may also argue that a patent or printed publication cited against her application does not meet the statutory requirements to qualify as prior art.115 She may also submit test data or other evidence in support of her arguments.116 The applicant's reply must respond to every ground of rejection and objection in the examiner's office action.117
Frequently, an applicant will opt to change (i.e., typically narrow) the scope of her claims by amendment to avoid the prior art and overcome the rejection.118 Changing the wording of the claims during prosecution of an application (by either narrowing or broadening the claims' scope), or adding new claims, is perfectly proper if the application as filed adequately supports the amended or new claims in accordance with 35 U.S.C. §112, ¶1.119 The applicant may also amend the written description and/or drawings to respond to the examiner's objections thereto, but not in a way that would fundamentally change what she has disclosed as her invention; this would violate the "new matter" prohibition.120
[E] Second or Final Office Action
Once the applicant has responded to the first office action, whether or not she has amended the claims, the application will be reexamined by the USPTO examiner.121 The examiner will thereafter issue a second office action. As in the first action, the examiner in the second action may allow some or all of the claims, or may reject some or all of the claims.122 The examiner's second office action is usually made final.123
If in a final action the examiner has maintained rejections with which the applicant disagrees, or has twice rejected any claim, the applicant can no longer continue to argue the rejections with the examiner. At this point she must either cancel the rejected claims, appeal from the examiner's decision to the USPTO's Patent Board,124 or effectively "buy" more prosecution time.125
[F] Requests for Continued Examination
A streamlined way of exercising the latter option, without having to file a "continuing" application as described below,126 is to file a request for continued examination (RCE).127 The RCE is an option that has been available since 2000 for nonprovisional utility or plant patent applications that were filed on or after June 8, 1995.128 The Federal Circuit has described an applicant's request for continued examination under 35 U.S.C. §132(b) as "a process, authorized by Congress in 1999, through which an applicant may try to persuade an examiner to allow an application after an otherwise-final rejection."129
To request continued examination, the applicant files a submission, which may include amendments and/or new arguments or evidence in support of patentability, plus a fee.130 Assuming the submission and fee are timely filed, the USPTO will withdraw the finality of the previous office action and prosecution of the application will continue.131
[G] Continuing Applications
Alternatively, while her first application is still pending, an applicant who declines to appeal can file a new or "continuing" application that will carry forward the information in the first application and may add more information thereto. A continuing application may be one of three types: a "continuation," a "continuation-in-part" (CIP), or a "divisional."132 Continuing...
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