Definition
The formal review process conducted by a patent office examiner to determine whether a claimed invention satisfies the statutory requirements for patentability. Upon filing a patent application, the examining authority — in the United States, the United States Patent and Trademark Office (USPTO) — assigns the application to a trained examiner who evaluates the claims and supporting disclosure against applicable legal standards before a patent may issue.
The examination process is substantive, not merely administrative. The examiner searches prior art, analyzes each claim for compliance with patentability requirements, and issues written communications (Office Actions) identifying any deficiencies. The applicant then has the opportunity to respond, argue, or amend claims before the examiner reaches a final disposition.
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Common Confusion
The phrase "examination of invention" is occasionally confused with:
— EXAMINATION OF APPLICANT: A separate, older procedure (now rarely used) in which the USPTO could require the applicant personally to submit to questioning about the circumstances and conception of the invention. This is distinct from the substantive examination of the invention's claims and disclosure.
— PATENT PROSECUTION: "Prosecution" is the broader term for the entire back-and-forth process between applicant and patent office, of which examination is a component phase. Researchers should not treat the terms as interchangeable in historical sources.
— EXAMINATION IN BANKRUPTCY: Black's Law Dictionary entries in the proximity of this term — specifically §§ 5086–5087 — address the examination of a bankrupt and the bankrupt's wife under bankruptcy proceedings. These sections have no connection to patent law. The adjacency in historical legal dictionaries is purely organizational and has caused misfiling and misattribution in secondary sources.
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Core Elements
Examination of invention in the patent context involves assessment of:
1. NOVELTY: Whether the invention is new in light of prior art (35 U.S.C. § 102 in U.S. practice).
2. NON-OBVIOUSNESS: Whether the differences between the claimed invention and prior art would have been obvious to a person of ordinary skill in the field (35 U.S.C. § 103).
3. UTILITY: Whether the invention has a credible, specific, and substantial use.
4. WRITTEN DESCRIPTION AND ENABLEMENT: Whether the specification adequately describes and enables a person skilled in the art to make and use the invention (35 U.S.C. § 112).
5. CLAIM DEFINITENESS: Whether the claims particularly and distinctly define the scope of the invention.
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Why It Matters in Research
The core research trap with this term is the historical dictionary context. Black's Law Dictionary, in the sections immediately surrounding "Examination of Invention," devotes substantial space to examination in bankruptcy proceedings — including examination of a bankrupt's spouse under § 5087. Researchers browsing historical legal dictionaries by page or section number risk conflating two entirely unrelated bodies of law. The patent-law meaning and the bankruptcy-law meaning share only the word "examination."
Within patent law itself, the meaning of "examination" has evolved considerably. In the nineteenth and early twentieth centuries, examination was more perfunctory and the evidentiary record of Office Actions was inconsistently preserved. Researchers working with pre-1952 U.S. patent prosecution history should be cautious: the modern doctrinal weight placed on prosecution history estoppel — where statements made during examination can limit claim scope — was not uniformly applied in earlier periods, and the paper record may be incomplete.
Jurisdictional variation matters here more than in most patent concepts. The substantive standards applied during examination differ across patent offices: the European Patent Office applies a problem-and-solution approach to obviousness that differs from the U.S. TSM (teaching-suggestion-motivation) and KSR flexible-inquiry frameworks. Researchers comparing examination outcomes across jurisdictions must account for these structural differences, not merely differences in national law.
For researchers focused on employment and invention ownership, the examination record is also relevant context for invention assignment disputes. What was claimed, amended, and disclaimed during examination can bear directly on the scope of what an employer or assignee actually owns.
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Historical Dictionary Support
Black's Law Dictionary provides a definition of examination of invention in the patent context but the surrounding sections (§§ 5086–5087) deal with bankruptcy examination. This organizational proximity has created confusion in secondary literature. The Black's entry for examination of invention itself is brief and largely procedural, reflecting the late nineteenth and early twentieth century understanding of examination as a bureaucratic gatekeeping function rather than the substantive adversarial-adjacent process it has become under modern administrative patent law.
Historical legal dictionaries generally underrepresent the procedural complexity of patent examination because the doctrine of prosecution history estoppel — which gives examination records legal consequence beyond the patent office — was not fully developed when most of these dictionaries were composed. Bouvier's Law Dictionary, for instance, treats patent examination in summary fashion. Researchers should not assume that the brevity of historical dictionary treatment reflects the term's legal significance; it reflects the era's underdeveloped administrative patent law.
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Jurisdictional Note
Examination of invention is a concept that exists in all major patent systems but operates under different procedural and substantive rules. The USPTO uses a first-inventor-to-file system (post-AIA, 2013) with examination standards set by the Manual of Patent Examining Procedure (MPEP). The European Patent Office, Japanese Patent Office, and others apply independent doctrinal frameworks. Outcomes in examination at one office do not bind other offices, though they are sometimes cited as persuasive evidence in validity challenges abroad.
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Encyclopedia Cross-Reference
IP in Employment — Invention Assignment, Shop Rights, and Pre-Invention Agreements (The Law Mind Intellectual Property Encyclopedia): Covers how examination outcomes and claim scope interact with invention ownership in employment contexts.
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