Patent Examiner - Laura Smith-Hewitt,
European Patent Office
This interview was produced by New Scientist in
conjunction with the European Patent Office, which paid for it to be
produced.
Published Wednesday 11 March 2015 by
New Scientist. It is reproduced in whole.
A Day in the Life of a Patent
Examiner
Innovation often starts with a “light bulb moment”. But after that it’s up
to a team of sharp-eyed patent examiners to figure out whether a new
invention deserves to be protected with a patent. Dai George asks patent
examiner Laura Smith-Hewitt what it’s like to work at the European Patent
Office (EPO).
What does a patent examiner at the EPO do?
At the EPO, our main job is to grant patents to inventors. We offer a
uniform application procedure so that inventors can seek protection for
their innovation in up to 40 countries across Europe, all through a single
application in English, German or French.
Patent examiners carry out the fundamental work of the EPO, in accordance
with the European Patent Convention. Every patent examiner specialises in a
particular field, based on their science background. In my time so far at
the EPO I’ve worked in several areas: I started out examining general-use
laboratory technology, such as that used in medical diagnostics and
forensics, and more recently I’ve specialised in the electrical analysis of
fluids, particularly glucose sensors. For every application we receive, we
search for similar inventions that have come before, looking for what we
call “prior art”, and examine the claims of the new invention. We can only
grant a patent if the technology demonstrates an “inventive step”, which
means that the inventor has made reasoned and objective progress on what
came before by solving a technical problem.
What kinds of patent applications are sent to you?
I see all sorts of different applications. We have applications from
individuals but they’re relatively rare. Many applications come from the
global players in industry – the company that files the most patents to us
is Samsung, for example. But many big companies also licence-in or buy new
technologies developed by small groups of research scientists.
We also receive a lot of applications from university departments. The EPO
functions as a crucial link between academic science and the technology
market. It is becoming increasingly important for universities to protect
their intellectual property, so that they can spin off and sell the fruits
of their research to technology companies.
Does a patent examiner need to have a science or engineering degree?
For any patent that I see, I need to be able to understand the technology
behind it. When someone is applying to patent a diagnostic device, I have to
know how that device works. I have a master’s degree in chemical
engineering, and these skills help me to understand the claims and
description for the technology quickly, along with any scientific drawings
that the applicant provides.
So yes, patent examiners need a science or engineering degree that is
relevant for the technical field they want to work in.
European Patent Office
(Source:
EPO)
What other skills and attributes do you need to be a good patent
examiner?
Examining any application takes a sharp eye for detail and an analytical
mind. You need to be able to judge carefully whether an application meets
the requirements of the law. If a patent can’t be granted for an invention,
you must provide the applicant with reasoned objections in a clear and
concise way, so that they have the opportunity to try to overcome them.
Making such judgements relies on being thorough in your research and knowing
the applicable patent law.
When someone files a patent, I have to find the prior art, and that requires
me to look through a lot of patents and academic or technical literature
using our IT tools. Every day I retrieve the most relevant documents from a
huge range of databases, and I need to understand those documents quickly
when I read them. It takes a great deal of persistence.
You should be ready for quite a steep learning curve. When I first came to
the EPO, I knew nothing about the law at all, so I had to learn the European
Patent Convention from scratch. The legal and technical training is
comprehensive and lasts for the first two years of your career at the EPO.
There are three official languages of the EPO – English, French and German.
You really need to know them all to work here. In some cases, if you can
demonstrate strong skills in only two languages – say, if you’re a UK
citizen with English as a mother tongue, but you have good knowledge of
French – it’s possible to be employed on a three-year contract, which
becomes permanent once you have acquired sufficient skills in the third
language.
The EPO has offices in Germany and the Netherlands. Are there any
perks to working abroad?
What’s nice is that you’re not judged on where you come from. Once you’re
in, you’re judged purely on what you do – there’s no hierarchy based on
which university or school you attended. I came here at the same time as a
batch of people who were in the same boat as me. Nobody knew anyone else’s
background, and it’s a bit like starting a new university course in that
respect, though of course it’s very much a work environment. You all study
for the same courses on law and how to use advanced retrieval tools to
search for patents, and those intense weeks that you spend together
contribute to lasting friendships. I’m still going to lunch with the people
I met on my first day here. You bond together, and then it’s very
interesting to find out about other people’s backgrounds and culture.
Living where I do in Munich, Germany, you have access to so much outside of
work, from Olympic swimming pools to beautiful parks. I’ve visited our Dutch
site in The Hague, and that’s great too – they have the seaside, for one
thing, which we don’t have in Munich.
My home is the UK, and I still have family there, so once every two years I
get additional leave to return. My children have thrived at the EPO’s
in-house crèche, where they have been learning German, which I couldn’t have
taught them at home because I’m not a native speaker.
Did You Know?
(Source:
The Patent Invention Magazine)
The mini turbines designed by Alpha 311
(UK) are just over half a metre high, but can be enlarged to a
height of two metres if necessary. In this way, each individual unit
would be able to produce the same amount of electricity as 20 square
metres of solar panels. And all this in an environmentally
sustainable way.
The devices are very small (just 68 centimetres high and weighing 4
kilograms) and made entirely of recycled plastic. Their unique
vertical design is designed to capture and exploit even the
slightest air movement. A field of application could be motorways
and highways. The special design of the mini turbines captures the
kinetic energy produced by the movement of vehicles.
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What’s the best thing about being a patent examiner?
You see the state of the art. I’ve always been interested in high tech, and
at the EPO you see products before they get to market, some of which will
later become successful, some not. I work in laboratory technology and
diagnostics, and in my field I’ve seen the progress of the Human Genome
Project, which began in the 1990s. I started at the EPO in 2000, and the
applications I was dealing with often concerned test tubes. In the
intervening years, the scale of the technology has been reduced; it’s gone
from test tubes to nano-tubes, and now I mainly work on microchips. I’ve
seen the development of “point-of-care” technology, which is hugely
important in hospitals. Now, a doctor can be at a patient’s bedside, take
one drop of blood and tell him or her what bacteria that sample contains.
Inventions are an incremental process, and it is often beautiful to see
someone simplifying technology and looking for ways of making it faster. As
Isaac Newton put it, we’re standing on the shoulders of giants. That is one
of the reasons why I became an engineer in the first place: I liked the idea
of solving problems and making things better for people. At the EPO you
constantly see people making attempts to improve existing technology.
What challenges have you faced?
Sometimes, the patents we grant are challenged, often by competing
businesses. They will argue, of course, that their company invented it
before, or that their competitor’s alleged invention doesn’t deserve a
patent because it is not sufficiently inventive.
These businesses can launch a legal opposition to the patent, which senior
patent examiners must oversee. You’re sitting there under huge pressure,
knowing that the case is highly significant in terms of its business
potential for the entire European market. You’re trying to understand the
technology, multiple languages and the law. But I like that because it keeps
you on your toes. You have to rise to it, by investing the time and energy
to improve your knowledge. I don’t like the word “stress”. It’s a situation
you choose to put yourself in, to test yourself and see how far you can go.
What advice would you give to someone who is thinking of applying
for a role as a patent examiner at the EPO?
Start by looking into what a patent actually is. You can go to
epo.org/espacenet, and take a look at the patents held in our database. Even
if you are not going to apply to the EPO, it’s useful for any scientist to
understand patents.
To learn the languages, spend some time in either France or Germany if you
can. You can also try listening to French and German radio stations and
reading foreign newspapers online. Try not to be afraid of language
barriers. As scientists, we already speak common languages of chemical
molecular formulae and mathematics. French and German are just other ways of
communicating your ideas.
Lastly I would say that if you come to work in the EPO, your scientific and
engineering training is certainly not lost. You are still using it every
day, and applying it in a way that’s a service to the public.
You
be the Examiner! Carry out a SWOT Analysis
Primary
Middle
Secondary
Australian
Curriculum General Capability:
Critical and creative thinking
Australian
Curriculum General Capability:
Literacy
Australian
Curriculum Cross Curriculum Priorities: Sustainability
Priority
Cooperative
Learning Activity
Teacher
To be reminded of the SWOT
Analysis and its procedures, please click
here.
Students
1. Form groups of 3 - 4
students.
2. Read the following article from The Patent Invention
Magazine 6 April 2021 (2 min read)
(Source:
The Patent Invention Magazine)
3. Re-read again, this time you are going to write the
Strengths, Weaknesses, Opportunities and Threats of these Mini Wind
Turbines! This analysis is called the SWOT analysis. To do this analysis: In
your notebooks, draw up a table: two columns and two rows.
Allocate - Strengths and Weaknesses; then
Opportunities and Threats. You can see how these headings are opposites.
4.
Each of you is to brainstorm as many factors as
possible.
5. Get together as a group and discuss what you each
wrote down as Strengths and Weaknesses; Opportunities and Threats. What do
you have in common? Are there any points that you need to work through?
6. Collaborate to the point that you all agree on each
of these points.
7. Share with another group.
8. As a class, discuss each of the sections of SWOT.
Is this a great
invention in your opinion?
What is holding it back?
How applicable is this invention in Australia?
As a class, would you pass it as a Patent Examiner?
Optional Extra
The Patent Invention Magazine has other inventions on
this page. Look at one of them and follow the same process.
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