Just a Patent Examiner's Views on Patent Classification

Just in time for the release of the new International Patent Classification, the Just a Patent Examiner Blog makes its final post with a few insights into patent classification at the U.S. Patent and Trademark Office:

When an application arrives at the Office, it receives a preliminary classification which determines which art unit ends up with the application, at least initially. Once it ends up there, however, that art unit has its own look at the application and makes its own determination as to whether the application actually belongs to them.

Usually, the preliminary application made by Office of Initial patent Examination, OIPE, is fine, and the application is docketed to the art unit.Sometimes, however, the preliminary classification isn't quite right, at least in the opinion of the examiner doing the classifying for that art unit. In some cases, however, the examiner doing the classifying for the art unit disagrees with the preliminary classification assigned by OIPE. At this point, the examiner must figure out where they think the application should actually be classified.

When an examiner picks up a new application to do an initial examination, they might well find that the application doesn't quite belong in their art. This doesn’t happen an awful lot, but it does happen. If an examiner finds themselves in this position, they need to try to figure out what is the application's proper classification, and then go to the SPE or a primary examiner in that art unit to try to convince them to accept the application. Sometimes they will agree with the classification and accept it, but sometimes times they won't.When this happens, an examiner will end up having to bite the bullet and examine the thing.

Normally, if there was some disagreement as to the proper classification, at least the thing could marginally be classified where it ends up, so it’s not as if the examiner is clueless as to the subject matter at hand. However, they might not be as familiar with that art as an examiner where the thing actually belongs. Instead of being able to pick the thing up and run with it, the examiner needs to take some extra time and thoroughly read the specification, and very likely find some prior art and read up on the subject. The examination may be fine, but it will take the examiner longer to become fully up to speed on the subject matter.

Finally, when a patent issues, the examiner assigns an 'original classification' using the guidelines available here.

The Anonymous Examiner suggest that there is "likely not much" that an attorney or agent can do to prevent this kind of runaround. However, I have found it quite useful to paraphrase class and subclass headings from the Patent Manual of Patent Classification in a "Field of the Invention" section in the first line of the application after the Title. Still, like the Anonymous Examiner, I too have wondered why the Patent Office does not just ask applicants propose a numeric class/subclass designation in the application transmittal forms.

Thanks again J.A.P.E. for providing a "place where examiners and attorneys could exchange ideas outside the context of the normal examiner-attorney relationship." It was great while it lasted.