What Does a Patent Attorney Do?

When most people think of attorneys, they picture them in courtroom appearances making dramatic speeches to a panel of jurors. The reality is that many attorneys rarely work in courtrooms, and there are even some lawyers who never appear in court at all.

The patent attorneys who prosecute patent applications are among these latter attorneys who essentially never have to make a court date. Instead, they practice before the U.S. Patent and Trademark Office. Some patent attorneys also practice in patent litigation, which means that they may bring lawsuits that are heard by a judge and possibly a jury.

Regardless of whether they focus on patent prosecution or litigation, patent attorneys practice in a small, specialized area of law. In fact, not everyone who is graduated from law school and passes a bar exam is qualified to be a patent attorney.

Instead, patent attorneys are required to have a scientific or technical background. This usually means that they have obtained an undergraduate degree in a scientific, engineering or other technical subject area. After that four-year education, they proceed to three years of law school, at the conclusion of which, they must pass the bar exam for the state in which they hope to practice. Then, they must pass a test that is administered by the U.S. Patent and Trademark Office that frequently is referred to as the “patent bar exam.”

Typically, before taking the patent bar exam, a new attorney obtains employment with an intellectual property law firm. The experienced practitioners at the firm guide and counsel the new attorney so that he or she gets familiar with the patent prosecution process. This also provides essential preparation for passing the patent bar exam.

Once the attorney has the credentials to practice before the USPTO, they are a full-fledged patent lawyer and able to help clients obtain the intellectual property protection that they need.

What Does a Patent Attorney Do?

When an individual or company invents a new product or process, then they may seek help from an intellectual property attorney who can help them to obtain a patent.

The process begins with a meeting between the client and the patent attorney. The client provides details about their invention, and the lawyer provides insight into the patenting process, what’s involved, how much it may cost and how long it is likely to take.

The client decides whether or not they want to proceed with either a search or an application. Attorneys perform a patent search to determine whether or not there are existing patents or patent applications on which the proposed invention disclosure might infringe. At the conclusion of the search, the attorney can provide a more educated estimate with regard to the potential patentability of the invention.

If the client indicates that they want to proceed with a patent application, then the intellectual property attorney makes an in-depth study of the technological area and gathers additional details regarding the invention from the inventors.

An intensive period of writing ensues as the patent attorney drafts the specification, claims and abstract that make up the application. The specification intricately describes the invention and all of its possible permutations while the claims point out the specific elements that the applicant wants to protect. The abstract is a summary of the specification.

The Filing of the Patent Application

The patent attorney’s firm handles submission of the completed patent application to the USPTO. Eventually, the application will be reviewed by another lawyer who works at the USPTO as an Examining Attorney. It’s the examiner’s job to decide on the patentability of the application. If the examiner believes that the invention isn’t patentable, then they will issue an Office action.

This is where the patent attorney steps in again, drafting amendments and a response to the Office action, arguing why the invention actually is distinct and patentable. Relying on their training, patent lawyers make legal arguments against the rejections to convince the examiner to issue a patent.

Patent Attorneys Fight Infringement

Intellectual property lawyers who litigate are adept at enforcing patent rights with all of the means at their disposal. This may include filing lawsuits when someone else infringes a patent holder’s rights. Not all of these cases actually make it to the courtroom. In fact, many of them are settled well before they are brought before a judge or jury. Still, the patent litigation attorney provides helpful, knowledgeable guidance with incredibly complicated court cases, ensuring that patent holders are able to protect their interests.

Do You Need a Patent Attorney?

Obtaining patent protection requires knowledge of an array of technical and legal factors. This is why it is generally recommended that inventors work with a patent attorney when it is time to protect their invention.

The experienced practitioners at the Williams IP Law are skilled when it comes to helping individuals and companies protect their intellectual property. If you believe that you need patent protection, then contact Jeff Williams to schedule an initial consultation.

Why You Need a Patent Attorney

Don’t Lose Patent Rights

It is common for some individuals or small companies to attempt to navigate the patent system on their own in an effort to save money. With the prices charged by some competitors for patent work, their actions are understandable. However, this is not recommended. There are multiple deadlines and other various dates which can creep up unexpectedly resulting in missed opportunities and lost protection if you are not fully aware of the processes and law.

Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. How does that affect your ability to file in foreign countries? Each country has some different patent rules. The America Invents Act that changed our patent system from a first-to-invent system to a first-to-file system is a step toward harmonization of our law with the rest of the world. However, differences still exist and the danger remains when traversing the process alone.

Important Invention Questions

  • Can you advertise the invention for sale?
  • Can you share it to potential investors?
  • When do you need to file the application in view of your disclosure?

Posting information on a website is a public disclosure. Many foreign countries prohibit the patenting of an invention after disclosure has been made anywhere in the world. Disclosure to an investor may be OK provided that the investors are required to sign a non-disclosure agreement. Even with proper agreements in place, there is risk in disclosing to investors prior to a patent filing. Additionally, many investors won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.

The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.

How to Choose the Right Patent Attorney

  1. Are you comfortable talking with your attorney? An attorney is a counselor with regards to legal rights and obligations. They can be very important and useful. However, if you find it difficult to talk to your attorney or just don’t feel that connection then maybe look elsewhere. Additionally, if your attorney lacks the ability to communicate effectively or timely (return calls/emails) then look elsewhere. Trust is built up by effective and useful communication between two parties. If you can’t trust your attorney, then why are they your attorney?
  2. Focus on the competency of the attorney more than firm size. The firm size is not as important as the skill of the attorney working your file. Don’t be fooled by the stigma that attorneys at large firms are better than attorneys at small firms. The correlation between attorney competency and firm size is very small, if non-existent. The correlation between the size of your fee and firm size is more significant than you think. You rightfully should pay the attorney his/her reasonable value…you shouldn’t have to pay extra just because the firm is large.
  3. Don’t be fooled by the sales pitch. Become knowledgeable about the legal process as much as you can. Intellectual property law can be complex. Understanding when something sounds fishy or too good to be true can be difficult. Learn all you can and be prepared with some information when you see your patent attorney. Most are honest and give good advice…some just tell you what you want to hear.
  4. Ask about fees. Fees are done in three ways and there is a reason and time for each type. In particular, ask the attorney how they compute their time and fees, and what sort of things they bill you for (i.e. short phone calls or emails).
    1. Flat Fees: Flat fees work great for transactional work – work that is maybe considered repetitive or easy to gauge in time.
    2. Hourly Fees: Hourly fees are used when the amount of work required is not so easy to predict.
    3. Contingency Fees: Contingency fees are used typically with litigation when the value of the work is based on some sort of settlement or award of money.
  5. Location. Some areas of law require frequent consultations and interactions with an attorney. Think of family law for example. Intellectual property law for the most part does not require as much one-on-one time with your attorney. Keep in mind the attorney should be accessible for you, but the face-to-face meetings are not as necessary in this type of law. Much can be accomplished electronically or via email. Location may be useful but not an absolute necessity. The closest patent attorney is not always the best fit for you and your legal issue. Be open to the idea of looking a little farther out if it means finding a better intellectual property attorney to suit your personality and needs.

Contact us at either of our Houston or Dallas/Fort Worth offices for a free consultation.

Fathers of American Intellectual Property Rights

The Beginning of Intellectual Property Rights

When America became an independent nation, its way ahead was unclear. Its economy was mainly agrarian, and the new country was almost wholly dependent on imports to meet many of its needs. Few industries existed. Moreover, no federal system existed through which intellectual property could be protected. In the realm of patents and trademarks, as well as virtually everything else, the Founding Fathers had to build an entirely new system from the ground up.

The Founding Fathers

Particularly well-known Founding Fathers like George Washington and James Madison were early proponents of intellectual property protection. Washington and Madison frequently worked together to secure legislation that was aimed at protecting the rights of inventors. They felt that IP was real property and that the creator of that property had a right to enjoy the benefits of their hard work. It has been recorded that Washington considered the safeguarding of these rights as a basic matter of justice. Perhaps even more importantly, he thought that protecting these rights just might be the key to America attaining economic independence.

George Washington

It was Washington who ensured that Virginia had a copyright law as early as 1785. Similarly, Washington lobbied the governor to patent a mechanical propeller boat that had been developed by inventor James Rumsey. The inventor later received a patent for his work in Virginia and other states as well. It has also been documented that Washington and Madison worked together to create the Constitution’s clause that grants “for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Thomas Jefferson

Another Founding Father took an opposing view of IP legislation. Although he was a prolific inventor himself, Thomas Jefferson never sought a patent for any of his work. He refused to protect ingenious devices like his “polygraph” that allowed him to make copies of letters as he penned them and the time-saving revolving service door, arguing that such innovations should be free for all to use. Nonetheless, while Jefferson served as Secretary of State, he was also the head of the Patent Office.

Despite his philosophical disagreements with restricting the free use of innovations, Jefferson still laid much of the foundation on which the modern IP laws are laid. He instituted regulations designed to encourage innovation rather than restrict it. He also established ground rules concerning what could and could not be patented. For instance, it was Jefferson who decreed that an invention must be useful and original in order to be patented. Jefferson also undertook to test each invention himself. Devices that did not perform as specified were not patented.

Jefferson’s attitude toward protecting IP evolved through his close involvement with the day-to-day operations of the Patent Office. Although the patent prosecution system would become far more freewheeling for several decades after his tenure, many of Jefferson’s early tenets are still honored at the USPTO today.

Andrew Jackson

The first 10,000 patents from the first 46 years were all issued without patent numbers. Andrew Jackson came in and reformed the entire structure of the patent system even going so far as to have a new Patent Office built.

Abraham Lincoln

Not that honest Abe did anything to revolutionize the patent system, he is known to be the only President to have attained a patent for his own invention. The 20 years following Lincolns patent experience the most growth in patent filings and applications.

Contact Texas patent attorney Jeff Williams to learn more about protecting your intellectual property rights. Today’s system is more complex than the Founding Fathers envisioned, and the guidance of an experienced patent attorney is indispensable to inventors.

The Basics of Intellectual Property

The most valuable asset that any business owns is its intellectual property. However, many business owners, especially novice entrepreneurs, aren’t clear about what intellectual property is and how to protect it. The clarity they need can be gained by working with an intellectual property attorney.

What Is Intellectual Property?

Intellectual property, or IP, can cover numerous assets. Perhaps it’s a new product or service. Intellectual property also may be a business’ name or logo. The code that goes into software or point-of-sale materials may similarly be intellectual property. Accordingly, IP can be things that are created by the human mind, the design of a new product or a symbol that shows which company makes a product.

How Do You Protect IP?

Several protection methods are available. The method that you use depends upon what you’re protecting and what form of protection you need.

  • Inventions typically are protected with a patent.
  • A logo, brand name or slogan is protected with a trademark.
  • Copyrights are used to protect literature, artwork and other creations that take tangible forms.
  • Trade secrets defend recipes, formulas, proprietary methods or unique devices.

Patents

When someone invents a new product, they may pursue patent protection. A patent doesn’t give you the right to make or sell that product. Rather, it gives the patent holder the right to prevent others from making, selling or using a product that is covered by the patent. Some of the standards by which a patent application is reviewed include whether or not the claimed item is new, not obvious to a person with skill in the industry and useful.

The typical term for a U.S. patent is 20 years from the date of filing the application. Patent protection additionally may be available in foreign countries if the patent holder will be making or selling their products overseas.

Trademarks

A registered trademark identifies the source of a product. It’s possible to register a trademark for a single word, a phrase or a logo. Logos can include words as well. A trademark tells consumers who made the product. With a registration, it’s possible to stop others from using a confusingly similar mark in the same or a related industry. Trademarks that rely on a fanciful word or a word that does not have a readily apparent connection to the product or service being sold tend to be the strongest. Trademarks that merely describe the product or service may not be entitled to registration.

As with patents, it is possible to pursue trademark protection in other countries. U.S. and foreign registrations typically must be renewed every 10 years, and there is no limit on the number of renewals.

Copyrights

A book, movie, photograph or computer code are all examples of items that can be protected by copyright. The protection is only available to things that can be reduced to tangible media. Accordingly, it is not possible to copyright an idea or a process. Someone who holds a copyright has the exclusive right to reproduce and distribute the protected work, rights which may be licensed to others.

Copyrights on works published after 1977 typically last for the lifetime of the author plus 70 years. If the work was produced within the course of employment, then the term is between 95 to 120 years, depending upon when the work was published.

Trade Secrets

When a patent application is published or a patent is issued, it becomes public knowledge. The patent holder has the right to exclude others from taking advantage of this technology, but only for a limited time period. If a company has a formula, recipe or process that they want to keep private for as long as possible, then they hold it as a trade secret. They must make ongoing, reasonable efforts to maintain the secrecy of this item to prevent it from being exploited by others.


Which Type of IP Protection Is Best?

Any type of protection can be helpful to a business. They can protect their inventions with patents and their logo with a trademark. A proprietary process can be covered by a trade secret while publications related to the business can be protected by copyrights.

The best way to determine which type of IP protection is needed is by working with an intellectual property attorney. Such an attorney can file patent and trademark applications with the U.S. Patent and Trademark Office or a copyright application with the U.S. Copyright Office. Schedule a consultation to learn more.