NIH Alumni: Where are they now? Patent Examiner, United States Patent and Trademark Office (USPTO)

Last year we had a number of postdocs from the NIH Intramural Research Program leave to start their careers with USPTO, here we interview 3 that started in May of 2012

Names: Sean Barron, PhD; Andrea McCollum, PhD; and Julie Wu, PhD
Location: Alexandria, VA
Time in current positions: 8 months (all started at the same time)
Postdocs:

  • Sean: the affect of nicotine on the hippocampus with Chris McBain at NICHD.
  • Andrea: biomarkers in ovarian cancer with Elise Kohn at NCI.
  • Julie: the role of mTOR for aged related processes with Toren Finkel at NHLBI.

What is a patent examiner? A patent examiner reviews applications and determines their patentability according to the laws and regulations for the US government. Patent applications need to comply with US laws in their format, organization, subject matter, etc., and contain strong support for the claims. Investigating the evidence of those claims and making sure that no one else patented or published the idea is where the patent examiner turns sleuth. The work requires checking publications, conferences, books, and other potential outlets to ensure that the item being patented is not already in the public domain.
How did they find this job? Andrea conducted informational interviews early on to determine where she wanted to go next in her career. With her interest sparked by speaking to people in patent work, Andrea took the FAES course: Intellectual Property and Patent Prosecution for Scientists. Sean took the same course as a way of introduction to the patent world after hearing about technology transfer at an OITE event. Julie applied for the position after researching a job post on an organizational e-mail. So each person had a different level of preparation for the job.

What skills are needed? Everyone agreed that an ideal candidate would have a good attention to detail, be quick to learn, and, as Sean put it, “be comfortable being uncomfortable”. The USPTO reads patents on every sector of science (and more), and a patent examiner needs be able to quickly process an application that may be barely related to the science they have previously seen. Additionally, examining patents is a high-paced environment, and there is an expectation that a certain number of patents will be reviewed each pay period. Sean views these targets as a positive in that you always have a good idea of how well you are performing. Excellent time management and organizational skills help an examiner deal with the fast pace necessary for the high turn around requirement.

What adjustments did you make moving to the USPTO? Becoming a patent examiner requires a change in mindset from that of a bench scientist. As a bench scientist, you are expected to be an expert at everything you do and to know your field in great detail. As a patent examiner, time is a luxury. You need to learn just enough to be able to accept or deny a patent with confidence. This fast pace requires a big shift from knowing a lot about a little to knowing a little about a lot.

What preparation can people do to follow in your path? In addition to the course previously mentioned, FAES offers several technology transfer related courses that can be applied for credit for a Masters of Science degree at the University of Maryland University College’s (UMUC) Graduate School of Management and Technology. Detailing in the Office of Technology Transfer is also a good way to check if intellectual property is a field you are interested in (see the recent Catalyst article: Details, details, details: Leaving the bench, but staying in science). A nice thing about working as a patent examiner is there is no previous experience required. You will be trained (extensively) in the patent process after placing in the job.

Keep in mind when applying to emphasize the breadth of your knowledge rather than the depth. You probably will not be placed in the area you researched, so it is important to show intellectual flexibility.

Is this career for everyone? Although all three of our alumni love their jobs, they also recognized that the career of a patent examiner is not for everyone. The pay and work life balance is excellent, the science is fascinating, and you can quickly gain control of your own career in the USPTO. However, the work is pretty independent, desk-based, and fast-paced. But, for the right people this is a career they can love.

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One Response to NIH Alumni: Where are they now? Patent Examiner, United States Patent and Trademark Office (USPTO)

  1. Anonymous says:

    I have been an avionics engineer for past 12 years. I’ve been looking for something in DC area and my fried suggested that USPTO is hiring. I applied, got an interview and an offer. I am so confused about what to do now? I have an engineering career path going with one of the big defense contractor. I am currently safe here but always on the lookout. I’ve nothing attached to the current area at the moment. If anyone of you have switched job from being an engineer to a patent examiner? Is it worth the switch after 10 years of experience? Is it easy to switch to another government agencies like DARPA, FAA or NASA after joining USPTO…just incase I find out that patent examiner is really not my thing. I have asked many and many have suggested they would do it only because it’s something different and you’ll not erase your 10+ years of experience in 2-3 years of something different?

    Nick

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