Our patent examiners are an integral part of our organisation, ensuring that only inventions that meet the legal standards for patentability receive protection. This role is critical in safeguarding Intellectual Property (IP) rights and promoting innovation.
IP matters. It touches everything that makes life more enjoyable, easier, and more prosperous. It is our mission to protect IP rights so we can give inventors, creators, and investors the confidence to turn their ideas into reality and know that they will be rewarded for it.
When an individual or company has an idea for a new product, piece of apparatus, method of manufacture etc. they can decide to protect it using a patent, which if granted gives them a 20 year monopoly on their invention. To get a patent can be quite complicated so most applications come via a patent attorney.
You might have heard of patent examiners – a certain well known physicist was a patents clerk for a short while (though he was mostly distracted working on something else at the time!), but what does the patent examiner job entail day-to-day, and is it something you might be interested in doing? Let's dive into the different aspects of the patent examiner job, like searching and examining patent applications! But before we get into that, let's put the job into its wider context…
There are quite a few! We have an Act and set of Rules which outline the requirements, and the Manual of Patent Practice (295 chapters) which gives us more detail on what the provisions in the Act and Rules mean and how Hearing Decisions and the Court Judgements have applied them.
When you become a patent examiner you have an initial training course to cover the basics and then lots of other training during your first few years. We don’t expect new patent examiners to know patent law. Some major requirements for a patent are that the invention isn’t excluded (e.g. computer programmes, aesthetic creations, business methods), that it hasn’t been done before and isn’t obvious to the skilled person.
The first thing a patent examiner has to do is to conduct a “search”. The purpose of the search is to find documents which are most relevant to the novelty and inventive step of the application. The majority of our searching is carried out using an online search tool built by the European Patent Office called “CST” which helps us search a database of over 100 million patent documents. In certain technology areas, we also use other databases to search for chemical compounds or biological material.
Each patent examiner is assigned to work in different technology areas, based on the Cooperative Patent Classification system (CPC). This is also the basis for most of our searching. Imagine the Dewey Decimal System that you have seen at the library but for patents. When we know the areas we need to search in, we use keywords to narrow down the documents. This often requires us to think of other ways in which the same device might have been described – a spring could also be a ‘biasing means’ or ‘elastic member’ for example.
Having narrowed down the documents to those we think are most relevant we then view them in more detail. One could say a search is similar to a mini research project you might conduct at university or in a scientific/engineering company. It isn’t a PhD thesis however: a patent search usually only lasts between 1-2 days depending on the technology and how complicated the search is. After the search is complete, various reports are drafted – one to the applicant explaining the results of the search, the other for the examiner carrying out the substantive examination.
Although this can sometimes be carried out at the same time as the search, the substantive examination can take place a couple of years later after the patent application has been published. The substantive examination is where the examiner decides whether the application complies with the Patents Act 1977 (as amended) and reports it to the applicant, usually via their attorney.
The examination reports explain the objection (problem) with the application to the applicant and as such are a combination of a technical report (for example explaining how a piece of prior art works and why it is relevant to the current application) and legal report (often referring to legal precedent to support an argument). We give our new staff training on how to examine patent applications and compile reports so don’t worry if you’ve never drafted anything like that before.
After the examination report, the applicant has a number of options – they can amend their application, argue with examiner’s objections or decide not to pursue the application any further.
If they amend or argue the application comes back as an “amendment”, which is very similar to a substantive examination – the examiner must now decide whether the application complies with the Act. If it does, the examiner sends it for grant. If it doesn’t, they issue another report. In some situations where an impasse is reached, a Group Head may decide on a specific issue (a “hearing”). Should the applicant disagree with that result, they can appeal it to the courts. Patent examiners are not involved in court cases.
