Examiner

The examiner is the official of an industrial property office responsible for processing an application for a right and ruling on whether it meets the conditions for grant. In patent matters, the examiner carries out or supervises the prior art search, assesses the patentability of the claimed invention and conducts the written exchange with the applicant until grant or refusal. Before INPI, the examiner’s role is governed by Articles L. 612-1 et seq. of the French Intellectual Property Code, and before the European Patent Office by Articles 16 to 18 of the European Patent Convention, which establish the Receiving Section, the Search Divisions and the Examining Divisions.

The examiner’s role before INPI

The INPI examiner checks the formal regularity of the application, unity of invention, clarity of the claims and compliance with the exclusions from patentability. Since the reform introduced by the PACTE Act on business growth and transformation, the examiner also assesses novelty and inventive step in the light of the search report, and may refuse the application for a manifest lack of either. The examiner proceeds by reasoned notifications, to which the applicant responds within the time limits set, by filing observations or amending the claims. Refusal of the patent application is pronounced by decision of the Director General of INPI, which may be appealed to the Paris Court of Appeal.

The EPO Examining Division

Before the European Patent Office, substantive examination is entrusted to an Examining Division consisting of three technically qualified examiners, to which a legally qualified examiner may be added. In practice, a single examiner conducts the procedure and drafts the communications, the Division sitting as a panel only for the final decision or for oral proceedings. The examiner responsible for the search draws up the search report together with a written opinion on patentability, and is generally the one who carries on with the examination. Decisions of the Examining Divisions may be appealed to the Office’s Boards of Appeal.

Dialogue with the examiner

The quality of the dialogue with the examiner determines the scope of the protection obtained. Arguments and amendments submitted in response to communications are on the public file and may later be relied on by a defendant in infringement proceedings to argue that the patentee has given up a broad interpretation of the claims. An interview with the examiner, available before both offices, often removes an objection more effectively than a written exchange.

Key points

The examiner processes the patent application, draws up or uses the search report and rules on patentability through communications to which the applicant must respond within the time limits. Before INPI, the examiner now assesses inventive step, and before the European Patent Office sits within a three-member division. Each communication should be answered precisely, the scope of concessions placed on the file carefully weighed and an interview requested where an objection withstands the written exchange.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

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