What is the difference between a patentability report and a regular patent examination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The main differences between a patentability report and a regular patent examination are:

• Scope: A patentability report focuses on specific claims or aspects of an invention, while a regular examination covers the entire application.
• Examiner Involvement: Patentability reports involve multiple examiners, whereas regular examinations are typically conducted by a single examiner.
• Purpose: Reports are used to gather specialized input, while regular examinations determine overall patentability.
• Output: A patentability report is an internal memorandum, not a direct communication with the applicant.

According to MPEP 705, “The primary examiner may incorporate the substance of the report in an Office action,” indicating that the report’s findings become part of the regular examination process.