Guidance

Patent examiner role

Published 28 April 2016

1. What is a patent?

A patent provides legal protection for an invention, helping the patent holder to innovate and grow their business. It does this by providing a limited term monopoly of up to 20 years. The patent holder can benefit from the investment whilst the public can see how the invention works. This stimulates further innovation.

2. What do patent examiners do?

Patent examiners are at the forefront of enabling this innovation. They ensure high quality, valid patents are granted.

Patent examining offers an unusual opportunity to combine scientific and technical knowledge with legal skills.

Patent examiners inspect the technical and legal aspects of an invention disclosed in a patent application. They ensure that an application meets all the requirements of a patent. For example, patents must be:

• new
• inventive
• clear

Patent examiners get to see the latest developments in technology.

The office deals with a wide range of subject matter, from chemical compounds to smartphones. Where possible, we try to allow each examiner to work in areas appropriate to their qualifications and interests.

There are two primary processes involved in examining patent applications, searching and examining.

2.1 Searching patent applications

The first process of a patent application that examiners deal with is known as a search. Examiners look for any evidence that the invention already exists.

Patent examiners analyse the invention in a patent application. They work out how it works, what it does, and what the potentially new and inventive aspect of the invention is by using their technical expertise. Examiners will then use this information to devise a strategy to search through specialised databases.

The results of the search are fed back to the applicant, upon which the applicant can decide whether to continue with their application. If they wish to proceed, the application comes back to the examiner for the second process.

2.2 Examining patent applications

The second process is known as substantive examination.

Patent examiners analyse the patent application. They identify any legal issues that may be wrong with the application. For example, whether it is perfectly clear what the applicant seeks their patent for. Furthermore, examiners write an in-depth breakdown of any evidence showing the invention is not new and/or inventive. They communicate this to the applicant via a report, which the applicant is then able to respond to and amend their application.

Patent examiners will then continue to work with the applicant to bring their application to a state where, if possible, it meets all the legal requirements and a patent may be granted.

3. Meet some patent examiners

The IPO receives patent applications in all fields of technology and patent examiners are therefore recruited from a variety of technical disciplines and experiences.

Meet the IPO Patent Examiners

4. Training

The IPO does not expect new patent examiners to have the legal knowledge required for the role before joining the office. Upon starting their career, patent examiners begin an extensive training programme to train them in the relevant legal and practical skills.

This programme runs through the early part of a patent examiner’s career and starts with an 8 week training course. This is designed to teach new examiners the basics of how to get started on examining patent applications.

The training course consists of a variety of lectures, seminars, workshops and coursework. In addition to this, the IPO provide a series of patent law lectures during this time.

Upon completion of this training course, new examiners will join examination groups. They will begin working on live cases, being tutored by senior examiners. This tuition is one to one and new examiners will change supervisors every 6 months for their first two years in the office.

Further training is provided throughout the examiners career, for example:

• diplomas in IP law
• language courses
• various technical training opportunities to stay up to date with current technology

5. Career development

The patent examiner career is structured, with opportunities for promotion to patent examiner after around 2 to 4 years and again to senior patent examiner after around 5 to 9 years. These promotions are ‘non-competitive’ - you are promoted when your performance reaches the required level; it is not necessary to wait for a vacancy to occur. However, more senior positions to deputy director and above are competitive.

6. Apply to be a patent examiner

Further information about when we are recruiting and the disciplines from which we are accepting applications can be found at patent examiner vacancies at the IPO.