As part of the Regional Seminar of the Elijah J. McCoy Midwest Regional US Patent and Trademark Office hosted by the Law School, MSL students were treated to a special panel on the role of the patent examiner and the trademark examining attorney. Alfrod Kindred, the outreach assistant regional director of the Midwest office, and Carol Spils, a trademark examining attorney, described their duties and gave reasons for considering a career in either field.

What does a patent examiner do?

A patent examiner is a US government employee, with an appropriate technical degree like engineer or scientist, responsible for deciding whether a patent application should be approved or rejected. The examiner carefully reviews a patent application, its specification, claims, designs and other details to see if it is fit for approval. The examiner also performs a search for any prior patents that may be similar and compares the new application to any previous claims. It is his duty to show that a patent is new or novel–or not–and that it complies with US patent legal requirements including whether it is an eligible subject matter, if it’s been described in specification, and if the claim has clearly defined what the applicant is trying to protect.

What does a trademark examining attorney do?

The job of an examining trademark attorney is to review trademark applications and decide whether to approve or reject them. Once an attorney has received an application file, they search in databases to see if there are any other similar trademarks, identify procedural and substantive issues in the application if need be, and issue office actions (approval or rejections). Most common grounds for refusal are trademarks that may create a likelihood of confusion or those that are merely descriptive, meaning they immediately convey knowledge of goods and services.

What are the benefits in becoming a patent examiner or a trademark examining attorney

Demands for these roles have grown substantially over the years. In the case of trademarks, applications have reached a record high so they’re in need of more trademark examining attorneys. They’re hiring 60 new examining attorneys this year to keep up with the caseloads. There are 26 trademark examining attorney law offices around the country, with 15-25 attorneys per office. Managers in the office make an average of $150,000 per year. Both jobs are a good springboard for the private sector, because the training and experience they receive is unique and the skills are easily transferrable. Since it’s a federal job, there are programs that assist with student loan repayments and they also provide tuition assistance for those who want to pursue law school.

Even if your path takes you elsewhere, a solid understanding of intellectual property rights can be fundamental to your chosen industry. “Our economy is going to be based on IP. Period,” said Alfrod. “It’s important that you understand what intellectual property to protect.”