Dr Samuel Edeagu is a Patent Examiner at the UK’s Intellectual Property Office. The Intellectual Property Office (IPO) is the official government body responsible for intellectual property rights in the United Kingdom and is an executive agency of the Department for Science, Innovation and Technology (DSIT). The IPO has direct administrative responsibility for examining and issuing or rejecting patents, and maintaining registers of intellectual property including patents, designs and trade marks in the UK.
How did you become a Patent Examiner?
Samuel studied for his BEng (Hons) in Electronic Engineering at the University of Nigeria and went on to do an MSc in Microwave Engineering at the Technical University of Munich. He then completed a PhD in Electronic Engineering at the University of Kent, specialising in optical communications for 5G transport networks. In between his degrees, he held various roles in the telecommunications industry and academia.
What is a patent examiner & how are patent grants awarded?
Samuel explained that an individual might create a new invention and want to protect it from being copied, manufactured or sold by others without their permission. If they are granted a patent for that invention, the patent lasts for 20 years and during that period the inventor is the only person (or company) that has exclusive rights to the patent. In effect, they have a monopoly in the market.
A good example of this is in the pharmaceuticals industry.
If a new drug is developed, the company wants to capitalise on that invention for as long as possible because once the patent runs out, other companies can start producing the same drug at a much lower price.
To prevent other people from making money from their invention, the inventor employs a patent attorney to put together a case for why the invention should receive a patent. That case is submitted to the IPO and the patent examiner has to decide whether the patent should be granted.
The patent examiner does this by first of all studying the documentation about the invention in order to understand what it is from a technical standpoint.
Once they have that in depth understanding, the patent examiner conducts a search of various patent databases to see if anyone else has invented something similar.
In order to do this, they have to devise a strategy for conducting that search, somewhat similar to planning a literature review for a PhD. The examiner has to work out what search terms to use and work out what words other inventors might have used to describe a similar type of invention.
Once the patent examiner has completed the search, they write a report stating whether the patent is new and inventive.
This report is sent to the applicant or their legal representative (patent attorney) for a response. The patent attorney responds to the report and a negotiation takes place on the objections to what the applicant is claiming. Eventually, if the patent application meets all the legal requirements, the patent is granted.
Of course, it is in the inventor’s interests for the scope of the patent to be as broad as possible because this gives them more leeway to make money from the invention.
However, it is in the interests of other inventors if the scope of the patent is as narrow as possible so that they too have a chance to create their own invention and not be sued for infringing on an existing patent.
The patent examiner therefore is responsible for determining just how broad in scope the patent should be, if granted.
How are PhD skills transferable to patent examiner work?
Samuel said that a lot of the skills and personal qualities he developed through his PhD are transferable to what he’s doing now as a Patent Examiner.
Being a patent examiner requires strengths such as curiosity, initiative, self-discipline, integrity, discretion, perseverance, as well as skills in critical and strategic thinking, the ability to make connections between concepts & ideas (lateral thinking), written communication skills, time management and organisation skills, negotiation skills, data management skills, and the ability to hold large amounts of information in one’s head while at the same time keeping track of detail.
What qualifications do you need to be a patent examiner?
Samuel pointed out that in order to apply for a Patent Examiner job, you only need to have a bachelor’s degree in a science, technology, engineering, and mathematics (STEM) field or have equivalent industrial experience at that level.
For people with PhDs, who are planning on leaving academia, this work offers the opportunity to use your high-level technical knowledge with distinct benefits such as:
- intellectual stimulation & learning
- lots of reading, research and writing
- an emphasis on working independently (great for introverts) within a larger team
- variety of work
- seeing the future of technology before anyone else
- reasonable starting salary
- on the job training
- career progression
- flexible working hours
- legal training in patent law and intellectual property law
In terms of subject knowledge, patent examiners must have a background in science and technology. This is not a career for people with a background in arts, humanities and social sciences (AHSS). If you do come from an AHSS background, you might consider working instead as a Trade Mark Examiner, Designs Examiner or Formalities Officer.
What’s the difference between a patent examiner and a patent attorney?
A patent attorney is trained in patent law and can help an inventor put together a patent application. The Chartered Institute of Patent Attorneys has a short video that offers insight into this role.
A patent examiner looks at the technical and legal aspects of a patent application and makes a recommendation about whether a patent should be granted.
How do you train to be a patent examiner?
Learning how to be a patent examiner is a bit like being an apprentice. You learn on the job under the guidance of more experienced examiners. Initially there is basic training in how to read patent applications, and search patent databases, and you learn about patent law. After that, you work on real cases under supervision. It takes about 2-4 years to get proficient as an Associate Patent Examiner, at which point you can progress to being a Patent Examiner and then later on, a Senior Patent Examiner.
Where do you find patent examiner jobs?
In the UK, patent examiners are employed as civil servants at the Intellectual Property Office (IPO) which has offices in Newport, South Wales (main office) and London. Jobs are advertised on the Civil Service Jobs website.
However, it’s worth noting that patents awarded in the UK only apply to the UK. An inventor may want to protect their invention in other countries within Europe (in which case they may submit an application to the European Patent Office (EPO)) or the USA (via the US Patent and Trademark Office (USPTO)) or further afield.
What this means is that as UK patent examiner, you may find yourself collaborating with colleagues in other international patent offices. It also means that if you’re multilingual (in German and/or French) and are willing to live outside the UK, you could consider applying for jobs at the EPO or if you an American citizen, at the USPTO, assuming you meet the relevant criteria for work permits and visas.
Find out more about patent examining
Prospects provides a comprehensive overview of patent examining and how to get into it.
The UK’s Intellectual Property Office provides an overview of intellectual property as well as information about related areas such as Trade Marks, Copyright and intellectual property law.
The United States Patent and Trademark Office provides information about how to become a patent examiner and a patent attorney (in the US of course, but it’s still helpful to read).
Samuel Edeagu’s LinkedIn profile is here. If you’d like to ask him questions directly, he’d be happy to help.
Thinking about what to do next after your PhD or Postdoc? An initial discussion to talk through where you are now and where you might be wanting to get to could help bring some clarity about next steps. Get in touch if you’d like to set this up.
