Profession Chat: A Researcher Who Traded Experiments for Patent Evaluations

From 2008 to 2021, Masudur Rahman worked as a research scientist, first as a postdoctoral fellow at Marshall University and then at Parabon NanoLabs, a biotech startup, before transitioning into an academic faculty position at Marshall University. Having experienced several elements of research—from conceptualizing and running experiments to analyzing data and writing papers—he realized that he truly enjoyed assessing a scientific idea’s feasibility and novelty.

Rahman had previously experienced the process of applying for a patent during his graduate studies at Toyohashi University of Technology, and working as a scientist, he found himself being drawn to reading patents. So, in 2021, he pivoted to a career in intellectual property by becoming a patent examiner at the United States Patent and Trademark Office (USPTO).

What do you do as a patent examiner?

I’m like a bridge between laboratory ideas and commercialization for new stem cell therapies, gene therapies, and immunotherapies. When someone has an invention that they want to patent, they have to prove that it is novel and non-obvious; these are part of the legal requirements to obtain a patent.

Invention and discovery are not the same thing. Discovery is something that already existed, while invention is the core thing that has never been done. My job is to figure out if that is a novel invention or not.

For evaluating novelty, I review inventor applications for these qualities by conducting thorough literature searches in our database of existing patents. Then, I summarize my findings and explain my reasoning for why something is or is not patentable for the inventor and their legal team. What I really like about this role is that I’m able to use my scientific training in a way that has real-world impact for multiple technologies and not just one research project.

How did you transition from benchwork into a patent examiner role?

At the USPTO, patent examiner positions are very specific to a particular topic within a research field. So, I applied to those areas that I had that expertise in. Despite applying to more than 10 positions, I didn’t have a lot of success, so I reviewed my resume with a career consultant. This person suggested that my resume was likely not making it through initial screening by application software, so I updated my resume to use clear keywords, technical descriptions, and role-specific language. This helped me get an interview and finally my current position. Although I had research and writing experience, I still received about four months of on-the-job training to become familiar with how to judge applications within the USPTO’s legal framework and how to write these official statements.

What advice do you have for anyone interested in being a patent examiner?

Develop a strong background in a particular field and use specific examples of this expertise on your resume to demonstrate your competence. My experience applying for a patent helped me demonstrate experience with this process. Even if you aren’t able to submit a patent application, practice assessing and explaining the novelty and application of your work, especially if it involves producing new methods or inventions. It’s also important to have good writing skills to clearly communicate your findings and conclusions.

This interview has been edited for length and clarity