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.