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[UVAgal4]

Hi all.
I am hoping someone can help me with this.

Our firm has been asked by one of our clients to evaluate a candidate for a position of Patent Engineer in their company. This candidate has some basic knowledge of IP, but is not an attorney or agent.
The position is to basically be the coordinator between the firm (us) and the inventors of the company.
No patent drafting or prosecution, doesn't need to know the nitty gritty article numbers, two or three months delay, etc.

Basically, evaluate invention summaries to see if they are at first glance patentable and sufficiently complete
Follow the portfolios, poke the inventor when technical questions are being asked, etc.
Thanks.

[klaviernista]

Here is what I would ask:

1.  Are you familiar with U.S. and foreign standards re: novelty and non-obviousness? (goes to core function of the position - evaluating patentability of invention disclosures)

2.  How familiar are you with (insert company)'s technology? (see note above.  If the candidate is process engineer with experience in diaper manufacturing, he/she might not be a good fit for a company that produces semiconductors, crystallizers, etc.)

3.  What about your background qualifies you to make a determination as to whether (insert company)'s is patentable?  (see note above re: question 1)

4.  Provide one or two examples where your attention to detail has prevented or corrected an error. (goes to ability of candidate to spot patentable nuances that might be overlooked)

5.  Give an example of when you were asked to to handle multiple projects at the same time, and explain how you handled that situation. (goes to the ability of the candidate to juggle multiple invention disclosures, correspondence, and other action items at the same time - frequently required in this type of position).

6.  Do you have any editing, publishing, or formal writing experience outside of engineering?  (Goes to the ability of the candidate to communicate in writing, both with respect to invention disclosures and general correspondence to patent attorneys.  This can be a critically important  skill, particularly if the candidate is going to be screening invention disclosures from engineers that are poor writers (most are) and conveying those disclosures to counsel).

[Wiscagent]

Klaviernista gave good suggestions. 

Also try to figure out if the candidate is "trilingual".
-   Can the candidate communicate with other engineers using their jargon?  And does the candidate know the jargon used by your client’s competitors?  It’s not unusual for company A to call something by one name and for company B to call the same thing by a different name.
-   Can the candidate translate jargon to more standard technical terms?  I recently purchased three “yards” of concrete for a repair job.  It was important that I understood the contractor to mean three “cubic yards”.  The candidate must notice and address that type of situation, and translate shop talk.
-   Does the candidate understand legal talk?  If the candidate casually tosses around terms such as: it’s obvious; there’s no prior art; the invention is ___  - there could be communication problems.

I hope that helps.

[Isaac]

Does the patent engineer need to know much of the IP side prior to being hired?   Some knowledge would of course be useful, but how much does the PA need to know that cannot be taught in a few months.   Quite frankly, I think most posters are overemphasizing the legal knowledge required for a new hire.

The primary usefulness of the patent engineer is to be allow the engineers/scientists get back to work of inventing/operating/etc. while getting quality disclosures and supplemental information to the lawyers.  The PA should be someone who can sit in on the initial disclosure meetings within the company and the then work directly with the lawyers as needed until the first draft is ready.

Unless the PA is also going to be drafting patents rather than completing disclosures, I think you want someone more familiar with the technology at hand than with Title 35.  The patent engineer is going to be working for the company and not the law firm.   I suspect that the law firm is not going to want the patent engineer to draft a disclosure.   For the law firm, this guy is going to be a first point of contact.

If the PA is going to be a senior person in the company, then he should know how to run an invention program at the company, but if someone else has that responsibility, then the PA just needs to know the company policies.

Needs communication, skills, project managing skills, and technical experience.   Everything else can be learned on the job.   Of course, the more the hire already knows, the better.

[petethebody]

If you want a patent attorney, pay for one.  If you can't afford one, hire a patent engineer.  Clearly the budget is dictating this decision.  Be realistic in your expectation.  Especially since I doubt there is any room for advancement in this position. 

You want someone who can read patents - that is it.  Focus on technicla ability. 

Although, why not hire a patent attorney?  The market sucks so much you could probably hire one for the same salary.  You will not keep that person for more than 4 years, but you wouldn't keep a patent engineer for much longer. 

[Isaac]

Although, why not hire a patent attorney?  The market sucks so much you could probably hire one for the same salary. 

The OP is screening applicants for a corporate client.   An attorney might happen to fit the criteria if the attorney happened to have the requisite technical experience, but there are lots more cheap tech types around who would be a pretty good fit for the job.

[trustme]

Also important to remember that patent attorneys do not necessarily always get along with engineers, and may not be the best fit. Engineers tend to see them as pettifogging.

[petethebody]

pettifogging

I learned a new word today.  Thank you. 

[Wiscagent]

... why not hire a patent attorney?

A patent engineer requires a different skill set than a patent attorney.  The patent engineer must understand the business and technical implications of an invention.  The patent attorney's concern usually focuses on how to obtain broad protection for an invention.

While some patent attorneys are also talented engineers, the typical patent attorney doesn't have a lot of experience as an engineer, especially in the particular field of concern.  And it's not clear how the years in law school and the years as an entry level associate have much value for someone working as a patent engineer.

And by the way, depending on the experience and skill level of the particular engineer and lawyer, it's hard to say which one would get demand a higher salary.

[UVAgal4]

Thanks everyone.
Just got done with the interview.
The candidate got rather defensive towards the end, along the lines of "Let's just stop right here, it's obvious I'm not what you are looking for." etc. We tried to reassure him that we didn't expect him to know all the procedural steps and everything, just to see whether he had a basic understanding of what PCT is, why a company would want to go that route, etc. Ah well. Not sure whether he will be hired or not.