Patent clerk
Encyclopedia
A patent examiner is an employee, usually a civil servant
, working at a patent office
. Major employers of patent examiners are the European Patent Office
(EPO), the United States Patent and Trademark Office
(USPTO) and the Japan Patent Office
.
s to determine whether the claimed invention
should be granted a patent
. The work of a patent examiner usually includes searching patents and scientific literature
database
s for prior art
, and examining patent applications substantively by examining whether the claim
ed invention meets the patentability requirements such as novelty
, "inventive step" or "non-obviousness"
, "industrial application" (or "utility") and sufficiency of disclosure
.
In most countries, Examiners are high level employees with clerical staff working under their supervision in supporting roles. For example, in the Indian Patent Office
, an entry level Examiner (official designation: Examiner of Patents & Designs) is a Group A (Class 1) gazetted officer
. This is the highest post in the set-up of the Indian Government service.
On April 13, 2007, a "Coalition of Patent Examiner Representatives" expressed concern that
According to Indian newspaper Mint
, Indian patent examiners have the world's highest workload and lowest pay. While a patent examiner in the European Patent Office would handle less than seven patent applications per month and a USPTO examiner would handle eight applications per month, an Indian examiner reportedly handles at least 20 applications a month. However an Indian examiner’s monthly salary is less than a third of his/her counterparts in other foreign patent offices.
(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:
Some examiners have work experience in industry, but such experience is not required. EPO examiners are also reportedly required to speak three languages fluently.
Examiners may be represented by trade union
s, FFPE-EPO and SUEPO.
(USPTO) prosecute applications for patents. Examiners make determinations based on federal codes, rules, and judicial precedents. These determinations are appealable through the U.S. Courts. An appeal of these determinations is three steps away from the U.S. Supreme Court
. Responsibilities for a patent examiner at the USPTO include:
Examiners are hired at the GS-5, GS-7, GS-9 or GS-11 grade levels and are currently eligible for two accelerated promotions after six and twelve months of service when they meet the performance of a new examiner. As of July 2007, new examiners are granted a recruitment bonus of $20,000 to $39,600 spread out over four consecutive years of fully successful service. Subsequent promotions are yearly and noncompetitive up to the GS-12 level, provided satisfactory performance is maintained.
Patent examiners in the US have responsibilities that are commensurate with their GS level. Promotions from GS-7 to GS-14 are non-competitive. At GS 11 or 12 they are expected to take a test equivalent to the Patent Bar in order to be eligible for promotion to GS-13. At GS-13 they are eligible to start the signatory program, a testing phase to see if an examiner can apply patent concepts (e.g. obviousness and novelty
) laws (35 USC
). When a patent examiner has passed program and been given signatory authority, that examiner has earned the title Primary Examiner and can sign their own office actions (e.g. allowances, rejections) without review and approval by a supervisor and is able to review and sign actions of junior examiners (patent examiners without signatory authority).
Supervisors at the USPTO are GS-15 employees who are necessarily primary examiners called 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 the USPTO, an examiner is measured entirely by his own performance, without regard to the performance of others. Legal, technical
and automation
training is provided to examiners at the USPTO. Experienced examiners have an option of working primarily from home through a hoteling program implemented in 2006 by the United States Patent and Trademark Office
(USPTO).
To work as an examiner with the USPTO, a person must be a U.S. citizen. Most patent examiners working at the USPTO have a bachelor’s or master’s degree in engineering or science.
Civil service
The term civil service has two distinct meanings:* A branch of governmental service in which individuals are employed on the basis of professional merit as proven by competitive examinations....
, working at a patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
. Major employers of patent examiners are the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO), the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) and the Japan Patent Office
Japan Patent Office
The Japan Patent Office is a Japanese governmental agency in charge of industrial property right affairs, under the Ministry of Economy, Trade and Industry...
.
Duties
Patent examiners review patent applicationPatent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
s to determine whether the claimed invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
should be granted a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
. The work of a patent examiner usually includes searching patents and scientific literature
Scientific literature
Scientific literature comprises scientific publications that report original empirical and theoretical work in the natural and social sciences, and within a scientific field is often abbreviated as the literature. Academic publishing is the process of placing the results of one's research into the...
database
Database
A database is an organized collection of data for one or more purposes, usually in digital form. The data are typically organized to model relevant aspects of reality , in a way that supports processes requiring this information...
s for prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, and examining patent applications substantively by examining whether the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention meets the patentability requirements such as novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
, "inventive step" or "non-obviousness"
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
, "industrial application" (or "utility") and sufficiency of disclosure
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
.
In most countries, Examiners are high level employees with clerical staff working under their supervision in supporting roles. For example, in the Indian Patent Office
Indian Patent Office
The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs & Trade Marks . This is a subordinate office of the Indian government and administers the Indian law of Patents, Designs and Trade Marks....
, an entry level Examiner (official designation: Examiner of Patents & Designs) is a Group A (Class 1) gazetted officer
Gazetted officer
A gazetted officer is a police officer in the Sri Lanka Police Service whose name is published in the Sri Lankan Government gazette. As such, they are similar to commissioned officers in the armed forces....
. This is the highest post in the set-up of the Indian Government service.
On April 13, 2007, a "Coalition of Patent Examiner Representatives" expressed concern that
According to Indian newspaper Mint
Mint (newspaper)
Mint is a business newspaper from HT Media Ltd, launched in collaboration with The Wall Street Journal on 1 February 2007. It is a premium business news publication aimed at decision makers and policy makers of the country and it is the first newspaper in India to be published in the Berliner...
, Indian patent examiners have the world's highest workload and lowest pay. While a patent examiner in the European Patent Office would handle less than seven patent applications per month and a USPTO examiner would handle eight applications per month, an Indian examiner reportedly handles at least 20 applications a month. However an Indian examiner’s monthly salary is less than a third of his/her counterparts in other foreign patent offices.
European Patent Office
Patent examiners at the European Patent OfficeEuropean Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(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
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
. 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
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
. 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
English language
English is a West Germanic language that arose in the Anglo-Saxon kingdoms of England and spread into what was to become south-east Scotland under the influence of the Anglian medieval kingdom of Northumbria...
, French
French language
French is a Romance language spoken as a first language in France, the Romandy region in Switzerland, Wallonia and Brussels in Belgium, Monaco, the regions of Quebec and Acadia in Canada, and by various communities elsewhere. Second-language speakers of French are distributed throughout many parts...
, and German
German language
German is a West Germanic language, related to and classified alongside English and Dutch. With an estimated 90 – 98 million native speakers, German is one of the world's major languages and is the most widely-spoken first language in the European Union....
. 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.
Some examiners have work experience in industry, but such experience is not required. EPO examiners are also reportedly required to speak three languages fluently.
Examiners may be represented by trade union
Trade union
A trade union, trades union or labor union is an organization of workers that have banded together to achieve common goals such as better working conditions. The trade union, through its leadership, bargains with the employer on behalf of union members and negotiates labour contracts with...
s, FFPE-EPO and SUEPO.
United States Patent and Trademark Office
Patent examiners at the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) prosecute applications for patents. Examiners make determinations based on federal codes, rules, and judicial precedents. These determinations are appealable through the U.S. Courts. An appeal of these determinations is three steps away from the U.S. Supreme Court
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
. 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.
Patent examiners in the US have responsibilities that are commensurate with their GS level. Promotions from GS-7 to GS-14 are non-competitive. At GS 11 or 12 they are expected to take a test equivalent to the Patent Bar in order to be eligible for promotion to GS-13. At GS-13 they are eligible to start the signatory program, a testing phase to see if an examiner can apply patent concepts (e.g. obviousness and novelty
Novelty
Novelty is the quality of being new, or following from that, of being striking, original or unusual. Although it may be said to have an objective dimension Novelty (derived from Latin word novus for "new") is the quality of being new, or following from that, of being striking, original or unusual....
) laws (35 USC
Title 35 of the United States Code
Title 35 of the United States Code is a title of United States Code regarding patent law. The sections of Title 35 govern all aspects of patent law in the United States. There are currently 37 chapters, which include 376 sections , in Title 35.Federally recognized forms of intellectual property are...
). When a patent examiner has passed program and been given signatory authority, that examiner has earned the title Primary Examiner and can sign their own office actions (e.g. allowances, rejections) without review and approval by a supervisor and is able to review and sign actions of junior examiners (patent examiners without signatory authority).
Supervisors at the USPTO are GS-15 employees who are necessarily primary examiners called 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
Senior Executive Service
The Senior Executive Service is a paygrade in the civil service of the United States federal government, somewhat analogous to the ranks of general or admiral in the U.S. armed forces...
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 the USPTO, an examiner is measured entirely by his own performance, without regard to the performance of others. Legal, technical
Vocational education
Vocational education or vocational education and training is an education that prepares trainees for jobs that are based on manual or practical activities, traditionally non-academic, and totally related to a specific trade, occupation, or vocation...
and automation
Automation
Automation is the use of control systems and information technologies to reduce the need for human work in the production of goods and services. In the scope of industrialization, automation is a step beyond mechanization...
training is provided to examiners at the USPTO. Experienced examiners have an option of working primarily from home through a hoteling program implemented in 2006 by the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO).
To work as an examiner with the USPTO, a person must be a U.S. citizen. Most patent examiners working at the USPTO have a bachelor’s or master’s degree in engineering or science.
Notable patent examiners
| Name | Birth year | Death year | Description |
|---|---|---|---|
| Genrich Altshuller Genrich Altshuller Genrikh Saulovich Altshuller , was a Soviet engineer, inventor, scientist, journalist and writer. He is most notable for the creation of the Theory of Inventive Problem Solving, better known by its Russia acronym TRIZ... |
1926 | 1998 | a Soviet engineer, inventor, scientist, journalist and writer. |
| Clara Barton Clara Barton Clarissa Harlowe "Clara" Barton was a pioneer American teacher, patent clerk, nurse, and humanitarian. She is best remembered for organizing the American Red Cross.-Youth, education, and family nursing:... |
1821 | 1912 | worked at the United States Patent Office (Currently the USPTO United States Patent and Trademark Office The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,... ) |
| Albert Einstein Albert Einstein Albert Einstein was a German-born theoretical physicist who developed the theory of general relativity, effecting a revolution in physics. For this achievement, Einstein is often regarded as the father of modern physics and one of the most prolific intellects in human history... |
1879 | 1955 | worked at the Swiss Federal Institute of Intellectual Property Swiss Federal Institute of Intellectual Property The Swiss Federal Institute of Intellectual Property is the federal agency in charge of intellectual property matters in Switzerland. Its seat is in Bern... |
| Thomas Jefferson Thomas Jefferson Thomas Jefferson was the principal author of the United States Declaration of Independence and the Statute of Virginia for Religious Freedom , the third President of the United States and founder of the University of Virginia... |
1743 | 1826 | first patent examiner of the U.S. Patent Office |
| Arthur Paul Pedrick Arthur Paul Pedrick Arthur Paul Pedrick was a prolific British inventor who filed for 162 United Kingdom patents between 1962 and his death in 1976. His inventions were notable for their almost complete lack of practical applicability.-Personal life:... |
? (>1918) | 1976 | UK Patent Office examiner and, subsequently, prolific inventor |
| R S Praveen Raj R S Praveen Raj R S Praveen Raj is an Indian social activist and intellectual property rights expert. Born on 31 March 1979, he started his career as an electrical and electronics engineer... |
1979 | Indian patent examiner and subsequently scientist and social activist |
See also
- Law clerkLaw clerkA law clerk or a judicial clerk is a person who provides assistance to a judge in researching issues before the court and in writing opinions. Law clerks are not court clerks or courtroom deputies, who are administrative staff for the court. Most law clerks are recent law school graduates who...
- Patent attorneyPatent attorneyA patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition...
- Patent engineerPatent engineerA patent engineer or patent scientist is a patent professional that is typically involved in preparing and prosecuting patent applications. The terms are usually applied to patent professionals with scientific or engineering backgrounds that do not require either attorney or patent agent...
- Patent Office Professional AssociationPatent Office Professional AssociationThe Patent Office Professional Association is a professional union of United States patent examiners. It was formed in 1964....
, the United States patent examiners trade unionTrade unionA trade union, trades union or labor union is an organization of workers that have banded together to achieve common goals such as better working conditions. The trade union, through its leadership, bargains with the employer on behalf of union members and negotiates labour contracts with... - Trademark examinerTrademark examinerA trademark examiner is an attorney employed by a government entity such as the United States Patent and Trademark Office to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant's trademark...
- United States Patent ClassificationUnited States Patent ClassificationThe United States Patent Classification is an official patent classification system used and maintained by the United States Patent and Trademark Office .- Overview :...
External links
- John W. Schoen, "U.S. patent office swamped by backlog; Without more funding, wait time could top 5 years". MSNBC, April 27, 2004. (ed., comments on problems and that 2900 new examiners are being sought by the USPTO.)
- Report to Congressional Committees 2005 "USPTO Has Made Progress in Hiring Examiners, but Challenges to Retention Remain" "http://www.gao.gov/new.items/d05720.pdf "