Patent Examiner in Germany

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When I completed my studies in mechanical engineering at Technical University Munich 7 years ago, I did not imagine that some day I would work at the third largest national patent office in the world. After my studies, I entered the nuclear power department of a utility company, where I was responsible for preventive maintenance of pipes and vessels, as well as the associated steam turbine. Six years later, it was time for a change.

In December 1999, I read a job advertisement for work at the German Patent and Trade Mark Office (GPTO) in Munich. The office had launched a recruitment campaign for about 60 scientists from chemistry, physics, and biological disciplines, as well as mechanical and electrical engineers, to attend an 18-month training program for patent examiners. The post was described as varied and interesting. This was exactly what I was looking for because I did not want to become too specialised.

Before the interview in February 2000, I collected information about the GPTO and careers in patent law via the Internet pages of the GPTO and other, foreign, patent offices. The GPTO is a federal authority subordinate to the Federal Ministry of Justice. It is the central authority in the field of industrial property protection in Germany and has roughly 2400 staff members. The GPTO and its predecessor authorities, "Kaiserliches Patentamt" and "Reichspatentamt," have been in existence for more than 120 years. The office has the legal duty to grant and administer industrial property rights (patents, trade marks, utility models, and industrial designs) in Germany and to inform the public on existing industrial property rights.

Candidates planning to work as patent examiners must meet the following requirements: a university degree, at least 5 years of relevant professional experience, and also language skills in English and French. The GPTO provides additional opportunities for examiners to enhance their knowledge of these languages. This is absolutely necessary because of the polyglot search file. Depending on the subject, the search file includes patent specifications and technical literature in English and French, above all, but also documents in Russian and Japanese, besides German documents. For the Japanese patent specifications "abstracts" are also available, i.e., short summaries of the invention in English to allow easier understanding.

The typical working method of a patent examiner can be described as follows: When the applicant (i.e., the inventor themselves, or their legal representative) files a request for examination of their application, the filing documents (i.e., description, claims, drawings, and models, if any) are examined for formal deficiencies. Pursuant to the law, this has to be done within 7 years after the filing date. After the formal examination, the examiner checks the patentability of the invention with regard to novelty, inventiveness, and applicability in industry, according to German patent law.

During this examination, the patent examiner places special emphasis on the judgement as to the inventiveness required. To evaluate inventiveness the examiner must investigate whether the invention was obvious to a person skilled in the art. In a first intermediate report the examiner informs the applicant or their representative, a patent attorney, on the results. This report describes the relevant state of the art and any conflicting prior art, as well as defects of the application and suggestions for remedying these defects. If the grant of a patent is possible because no prior art that conflicts with the invention is found, the patent is granted by the patent examiner alone. The examiner is only bound by the patent law and accountable to their own conscience; they may decide independently of any third party, even their supervisors. The applicant will then obtain a monopoly on the invention for up to 20 years.

Of course, the applicant may lodge an appeal against a negative decision by the patent examiner. The examiner may then change his decision; otherwise, the appeal will be remitted to the Federal Patent Court. At the patent court, a panel of three technical judges--very experienced former patent examiners--and a judicial member make the decision, as a rule, in the course of a hearing.

After expiry of my notice period with my former company, I started my patent examiner training in August 2000. My current 18-month training under the tutorage of two experienced patent examiners covers all duties of a patent examiner. In addition to the practical "training on the job," I attend in-house law courses, on patent and civil law in particular, and courses on database languages. Knowledge of the database languages used by national and international providers is necessary because an examiner does not only search the patent database of the GPTO, but also other databases, using the respective query languages.

After nearly 14 months at the GPTO I have no regrets about changing my job. For the next few years my examination field will be the controlling of vehicle transmissions. This is partly a new area for me, despite my previous work experience.

Because of the great number of incoming patent applications and technological developments, the responsibilities of an examiner involve a wide range of activities. Flexibility of thought and a broad technical as well as a basic scientific knowledge are essential for this job. Every day, the examiner processes a new application, including searches for the relevant state of the art and drawing up an intermediate examination report. Communication skills for corresponding with applicants and opponents and accuracy of style are all necessary attributes, because the examiner's comments are legally binding.

Because of the high level, and indeed rising rate, of patent applications (about 110,000 per year), the GPTO predicts that it will recruit more than 180 new patent examiners over the next 3 years. From my own experience, I can say that it is both a demanding and challenging job that will always be highly interesting. Besides, the examiner's work is an important contribution to the economy, because he decides which applicants will be awarded a temporary monopoly for "true" inventions. Their knowledge will be published and foster further technological advances for the benefit of society.