Patent Protection – Examiner's Incentives and Experties

The Examiner’s Incentives

The Patent Office evaluates its patent Examiners primarily according to the number of applications they process. Examiners, therefore, have no incentive to spend very much time on any one application, as it is to their benefit to process applications as quickly as possible.

The Examiner typically does not take the time to read and study an application at length. An Examiner usually does a quick search to discover all of the relevant patents and other public information pertaining to the claims in an application. The Examiner then typically sends the applicant a letter (Office Action) rejecting the claims as being obvious in view of the material he or she has discovered during his or her search. The applicant must then respond by carefully explaining and distinguishing each cited reference, thereby demonstrating to the Examiner that a patent should be issued. This routine saves the Examiner time since the applicant has spent his or her own time figuring out why the references cited by the Examiner are not particularly relevant — instead of the Examiner taking the time to do so. Thus, claims that are originally rejected by an Examiner may be frequently later allowed after the Examiner has had the opportunity to read the applicant’s response distinguishing the invention from the cited references.

The Examiner’s Expertise

Patent Examiners all possess some type of technical training, and a particular category of inventions is assigned to each examiner. Some categories are very narrow, and one Examiner, for example, may only handle applications based on the manufacture of electronic circuit boards. Such an Examiner will thus acquire a great deal of expertise on the subject of such circuit boards.

However, some Examiners are assigned a broad category of inventions to examine. This is simply due to the fact that the inventions can only be divided up into so many categories. Hence, it is very likely that such an Examiner will be dealing at times with inventions with which he or she is not very familiar. Thus, part of the application process may necessarily include educating the Examiner as to the particular problems or advantages addressed by the invention to which the application relates.

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