In the world of innovation, protecting your unique ideas can be crucial. Having an experienced patent attorney can help. A patent attorney is a legal professional who specializes in patent law, a sub-type of intellectual property law. They help inventors and businesses secure and defend patents for their inventions.
But what exactly does a patent attorney do? Beyond filing patent applications, patent attorneys have many responsibilities, including conducting patent searches, responding to office actions, and managing patent portfolios. They can also advise on patent strategy for inventors or businesses and sometimes handle patent litigation.
Keep reading to better understand what patent attorneys do and how an experienced patent law team like Schell IP can benefit you, whether you’re an inventor, entrepreneur, or business.
Understanding the Role of a Patent Attorney
A patent attorney, a specialized type of IP attorney, is a legal expert in intellectual property law. A major aspect of the work of a patent attorney is to secure patents, which are legal protections safeguarding the exclusive rights in inventions.
Their role is multifaceted. It involves understanding the technical aspects of an invention and its market potential in order to effectively write a patent application. They also must understand the complexities of patent law to litigate and defend patents.
Patent attorneys often work closely with inventors, entrepreneurs, and businesses. They often advise on patent strategy as it relates to the overall business or exit strategy.
Some may think of a patent attorney as a guardian of innovation. They play a crucial role in fostering creativity and technological advancement.
Becoming a Patent Attorney
Becoming a patent attorney requires a specific educational and professional path. Aspiring patent attorneys must have a college degree in science or engineering, as technical knowledge is required to understand the inventions they’ll write patents for. Most lawyers do not qualify to take the patent bar exam because they do not possess the requisite scientific expertise.
After earning a scientific degree, the next step to become a patent lawyer is to attend law school to earn a Juris Doctor (JD) degree. This is followed by passing a state bar exam to become a licensed attorney.
In addition to these steps, they must also pass the United States Patent and Trademark Office (USPTO) registration exam. This is often referred to as the “patent bar exam.” Then, they can become a practicing patent attorney.
Key Responsibilities of a Patent Attorney
A primary responsibility of a patent attorney is to assist inventors and businesses in securing patents for their inventions.
This involves a deep understanding of patent law and technical knowledge, while also understanding the invention and its technical aspects. Both of these parts are imperative to draft a clear and detailed patent application.
Patent attorneys also often conduct patent searches to ensure that the invention is novel and non-obvious. This entails searching, reading, and understanding existing patents to ensure there isn’t an existing patent too similar to that of their client. They also respond to office actions from the USPTO and communicate with patent examiners.
Finally, patent lawyers also advise clients on patent strategy and manage patent portfolios. They also assist in patent licensing and negotiations. Patent law firms like Schell IP, from its office in Boulder, Colorado, specialize in advising on patents as an asset within a business strategy.
Assisting with Patent Applications
One of the primary duties of a patent attorney is to assist with building patent applications and advancing them through the process of patent prosecution before a patent examiner at the USPTO. They work closely with inventors to understand the invention and then draft a detailed patent application that describes the invention and its uses.
A patent application generally must include claims. Once issued, these define the scope of the invention’s protection. The patent attorney must have the knowledge and experience to ensure that the claims that are part of the patent application are broad enough to provide strong protection, but not so broad that the claims become unpatentable or unenforceable.
Conducting Patent Searches
Before filing a patent application, a patent attorney often conducts a patent search. This patent search is to check if the invention is novel and non-obvious, meaning it’s a completely new invention or idea. The search involves reviewing existing patents and scientific literature.
The results of the patent search can influence the drafting of the patent application. It can also help to anticipate potential objections or rejections articulated in an office action from the USPTO, which can be important for defending a patent application.
Responding to USPTO Office Actions
After a patent application is filed, the USPTO reviews it. The patent examiner working at the USPTO may issue an office action. This is a document that raises questions or objections about the patent application. The patent attorney’s duty is to respond to these office actions. They must address the examiner’s concerns and argue for the patentability of the invention.
Patent Strategy and Portfolio Management
Patent attorneys also advise clients on patent strategy. This involves deciding which product concepts and inventions to expand upon and patent and in which countries. They also can manage the client’s patent portfolio.
Some patent law firms, like Schell IP, may also advise on patent strategy as a business asset, i.e. how you can use your patents to your advantage when thinking about fundraising or exit strategy. Attorneys with business experience, much like Schell IP’s experience building successful companies in Boulder and Denver, Colorado, may be able to advise in this area.
This can also include tracking patent maintenance deadlines and fees. They also monitor the market for potential infringements of the client’s patents. Note that it is always the responsibility of the patent owner to defend their patents.
Patent Attorneys vs. Patent Agents: What’s the Difference?
Patent attorneys and patent agents both assist with the patent application process. However, there are key differences between the two roles.
A patent attorney is a licensed lawyer who specializes in patent law. They can represent clients in court and provide legal advice. You should advise a patent attorney when filing a patent.
On the other hand, a patent agent is not a lawyer. They can assist with patent applications but cannot provide legal advice or represent clients in court. Typically, patent agents assist with only a subset of patent related tasks like compiling application documents and completing patent searches.
Patent Litigation and Infringement Cases
Patent attorneys play a crucial role in patent litigation and infringement cases. They represent clients in court, defending their patent rights or challenging the validity of others’ patents when asserted against their own clients.
In addition, they provide strategic advice on potential infringement risks. This helps clients avoid costly legal disputes and protect their intellectual property rights.
The Value Patent Attorneys Bring to Innovation
Patent attorneys play a crucial role in fostering innovation. They protect new ideas and investments in research and development by securing legal protection for inventions.
They also contribute to strategic decision-making by understanding the business implications of patent law. This helps startups secure funding and businesses to grow.
If you are in search of a patent attorney to file or defend a patent of your own, book a free consultation with Schell IP either via Zoom or in our Boulder or Denver, Colorado patent law firm offices now.
