Examination of a standard patent application
A standard patent application is examined by the national or regional patent office with which it is filed. Only if the application passes examination will a patent application be granted.
The standard patent application will generally follow at least one of a provisional patent application and an international patent application, however it may be the first filed application.
Examination usually will not commence until at least a year after the standard patent application is filed. Some patent offices will accept a request to expedite examination. Such requests can be expensive and complicated in the US.
The patent office will conduct a search for documents published before the standard patent’s priority date (usually the filing date of the corresponding provisional patent application) that in the opinion of the patent office demonstrates that the invention claimed by the standard patent application lacks novelty and inventive step (that is, it is obvious). The search focusses on published patent documents, however, patent offices are increasingly relying on other types of publications, including web sites and books.
The patent office also will check that:
- the claims are clear;
- the claims are well supported by the detailed description of the invention in the standard patent application’s specification; and
- there is only one invention.
Other grounds for invalidity are also considered by the patent office.
The applicant then has the opportunity to consider the patent office’s objections, and provide a reasoned response, possibly with amendments to the specification that address the objections.
There may be more than one examination report issued that requires a response.
After overcoming all of the objections of the patent office a patent may be granted.
In the case that the the application is finally rejected, it is in many cases possible to escalate to an appeal or hearing.