The United States Patent and Trademark Office (USPTO) housed within the United States Department of Commerce is a legal locus point for the vast majority of the intellectual property registered in the United States. The USPTO has housed within it the patent and office and the trademark office, as well as a number of other offices relating to legislation, policy, administration, etc. However, the patent office itself is comprised primarily of patent examiners, who are experts in their field and possess scientific degrees relating to the discipline covered by the patents they handle. While patent examiners are always specialized in particular scientific area—engineering, life sciences, or physical sciences—they may or may not be attorneys.

Patent examiners are involved in the patent prosecution process from start to finish. They will examine a patent application and review it for failure to comply with any number of the statutory bars to patentability, including whether the invention is patentable subject matter, whether it is not obvious, whether it is novel, and whether it serves a utilitarian function. The examiner will do this by examining what is called the “prior art,” which means the examiner will review past inventions created around the world. The examiner will do this to determine whether the invention for which registration is being sought would have been obvious to a person of ordinary skill in the art, i.e. whether it even constitutes a sufficient improvement, advancement of existing technology or “inventive step” to be protected under U.S. law.

If an examiner determines that there is a defect with a particular patent, the examiner will issue a denial. It is at this point that the use of an experienced patent attorney can be the difference between a successful registration and a permanent denial. The reason for that is simple; attorneys know how to fight a patent examiner’s determination based not only on the scientific facts but on the law that governs patentability and its interpretations by higher authorities. These authorities include the Patent Trial and Appeal Board (formerly known as the Board of Patent Appeals and Interferences), as well as the United States Court of Appeals for the Federal Circuit, and ultimately the United States Supreme Court. In other cases, the Commissioner of Patents and Trademarks may overturn a decision made by a patent examiner where issues arise other than those of substantive patent law.

While each of these higher authorities is theoretically able to offer relief for a patent applicant, in reality much of what goes on in the patent office happens at the examiner level. Patent attorneys are familiar with what referred to as “office actions,” and they know how to respond properly to these office actions in order to amend the legal claims and/or the specification in a previously denied patent.Particularly if your patent application is denied, that might be a good time to consult a patent attorney. That said, the patent office will work with applicants to some degree on the initial stages of filing, and applicants may be able to save some money and complete some of the earlier stages of the application with the patent office’s help.