What Does a Patent Attorney Do?

Why do I need the assistance of a Patent Attorney?

Securing a patent is not merely about describing the invention, filling out forms, and submitting them to the United States Patent and Trademark Office (USPTO). It's an extensive process that requires deep knowledge of patent law, technical expertise, and strategic planning. Patent attorneys and law firms bring a wealth of experience in patent strategy, risk management, and legal advocacy, making them invaluable assets for inventors and businesses alike.

As patent attorneys, our primary role is to assist inventors and companies in securing legal protection for their innovations through patents. The patenting process requires careful evaluation of the invention, a patentability analysis, and meticulous, strategic drafting such that the patent application presents the invention in a manner that maximizes its chances of being granted a patent. Each of these tasks requires a high level of skill and foresight.

Meeting with the Client to Assess the Invention

Patent attorneys play a crucial role in helping inventors and companies protect their inventions and navigate the patent process. But what does a patent attorney do, and why are they indispensable in the patenting process?

Firstly, patent attorneys work closely with the inventors to thoroughly understand their invention. This involves detailed discussions to grasp the nuances and unique features that distinguish their innovation from existing technologies. The invention is also evaluated to determine whether it meets certain formal requirements of a patentable invention, including whether it falls into one of the statutory categories for an invention and whether the invention has been sufficiently reduced to practice to enable a person of ordinary skill in the relevant art to practice the invention.

Once the patent attorney thoroughly understands the invention, a further discussion is held regarding how the client will offer the invention as a product or service and how a competitor may try to offer a competing product or service. This discussion allows the attorney to focus on the most economically important aspects of the invention and to anticipate potential design-arounds that competitors may attempt.

Subsequently, a patent search is performed to assess whether the invention is patentable. The invention is compared to related prior art found in the search to determine whether the invention is both novel and non-obvious in view of the related prior art. This step is crucial to identify prior art that could potentially prevent the invention from being patented. The due diligence process minimizes the risk of rejection and informs the drafting of a robust patent application.

If the invention's patentability is established, the inventors are advised on the best strategies to protect their intellectual property. The client needs to understand the scope of patent protection that is available in view of the prior art. Only the novel and non-obvious aspects of the invention can be a basis for patentability and the claims should be focused on those aspects.

Once these early determinations are made, the patent attorney may advise moving forward with drafting a patent application, if the patentability analysis warrants it.

Preparing Thorough Patent Applications

A well-crafted utility patent application is essential to prevent competitors from easily designing around the patent. Key aspects include:

1. Clear and Precise Claims: The claims define the scope of the patent's protection. They must be written clearly in proper claim language and must specifically cover the invention adequately without being overly broad, which could lead to rejection, or too narrow, which might limit protection against competitors.
2. Strategically Drafted Claims: Anticipating potential design-arounds by competitors, the claims should be crafted strategically to cover variations of the invention, ensuring broad, yet defensible protection.
3. Detailed Description: The application must include a comprehensive description of the invention, explaining how it works and how to make and use it. This enables others skilled in the field to replicate the invention, satisfying the enablement requirement of patent law.
4. Disclosure of the Best Mode: The inventor is required to disclose the best method known for carrying out the invention at the time of filing. This ensures transparency and that the public benefits from the inventor's knowledge once the patent expires.
5. Proper Use of Drawings: Drawings are essential for illustrating the invention clearly, especially for complex inventions. They must adhere to specific formatting and quality standards set by the patent office.
6. Background: Providing context by discussing existing technologies, explain the problems or issues solved by the new invention, and demonstrate its novelty and non-obviousness.
7. Abstract: A concise summary that gives a clear overview of the invention's purpose and key features, aiding in quick understanding and searches by the patent office.
8. Consistent Terminology: Using consistent and unambiguous terminology throughout the application prevents confusion and misinterpretation, which can weaken the patent.
9. Compliance with Formal Requirements: Adhering to all legal and procedural requirements, such as proper formatting, correct use of units and symbols, and timely submission, is essential to avoid delays or rejections.
10. Legal and Technical Accuracy: The application must accurately reflect the invention's technical aspects while meeting all legal standards, minimizing the risk of challenges during prosecution or litigation.

A well-prepared utility patent application enhances the likelihood of approval and strengthens the enforceability of the patent. It provides robust protection, allowing inventors and companies to secure their competitive advantage and capitalize on their innovation.

Prosecuting Patent Applications Before the Patent Office

The handling of the patent examination process is critical to the success of the patent application. The assistance of a patent attorney is a necessity, if you want to ensure that the application is properly prosecuted. It is the job of the patent attorney to understand the patent law, the ministerial processes of the patent office, and the strategies for overcoming any rejections made by the patent examiner.

Once a patent application is filed, the patent office conducts a search for existing patents and other prior art, and then analyzes the patent claims to determine the patentability of the claimed invention. The patent examiner drafts and issues an office action providing their analysis, which may indicate that the claims are patentable (allowed), the claims are rejected for formal, lack of novelty, and/or obviousness issues, or some of the claims are allowed and some are rejected. It is the patent attorney's role to analyze the office action, determine whether the examiner's position is in accordance with patent law, and to prepare a response that includes claim amendments and/or arguments that address the issues in the office action. It is the goal of the patent attorney to make the approval process as quick as possible, while securing the broadest possible protection for the invention. Our patent attorneys have extensive training in patent law and experience in communicating with patent examiners. Patent rejections can often be resolved through an interview between the patent attorney and the examiner. However, not all patent cases progress swiftly. In some cases, there are several office actions issued. This usually occurs where the invention is closely related to the prior art.

Appeals and Disputes Before the Patent Trial and Appeal Board

If a patent application is rejected, our patent attorneys are equipped to handle appeals before the Patent Trial and Appeal Board (PTAB), and other proceedings, including Post-Grant Reviews (PGRs) and Inter Partes Reviews (IPRs). These proceedings are complex legal processes that require specialized knowledge in patent law and technical expertise in the relevant field.

When a patent application is rejected by a patent examiner, the rejection may be appealed to the PTAB. A patent attorney represents the applicant in appealing the decision. The attorney prepares detailed legal briefs arguing why the invention meets all patentability requirements, challenging the examiner's position. The examiner is then forced to defend their position before the patent judges of the PTAB. The attorney may also present oral arguments before the board, responding to questions and clarifying points to persuade the judges to overturn the rejection.

In Post-Grant Reviews (PGRs) and Inter Partes Reviews (IPRs), the patent attorney may represent either the patent owner or a third party challenging the patent. In these trial-like proceedings, the attorney's role includes:

1. Drafting Petitions or Responses: Preparing petitions to initiate a PGR or IPR by identifying grounds for challenging the patent's validity, such as prior art or issues of patentability. Conversely, if defending a patent, the attorney crafts responses to counter the challenges to the patent.
2. Evidence Gathering and Presentation: Collecting relevant technical documents, expert testimonies, and other evidence to support their client's position. The attorney presents this evidence in a manner that is persuasive and complies with PTAB rules.
3. Navigating Procedural Rules: Managing strict timelines and procedural requirements is essential. The attorney ensures all filings are timely and adheres to the PTAB's regulations to prevent procedural dismissals.
4. Oral Hearings: Advocating on behalf of the client during oral hearings, where the attorney presents arguments, addresses the board's questions, and refutes the opposing party's claims.
5. Strategic Counseling: Advising clients on the risks and benefits of initiating or defending against PGRs and IPRs, including the potential impact on related litigation or business objectives.

By leveraging their legal acumen and technical understanding, patent attorneys help navigate the PTAB process. Their expertise increases the likelihood of a favorable outcome, whether securing patent rights or challenging the validity of a competitor's patent, thereby significantly influencing a company's intellectual property strategy and competitive position.

Patent Enforcement

A patent attorney brings specialized skills and invaluable expertise to patent disputes and litigation. Their deep understanding of both patent law and the technical nuances of the invention is invaluable in navigating complex legal disputes. One of their primary skills is the ability to interpret and analyze patent claims, which define the scope of protection provided by a patent. An accurate interpretation requires thorough examination of the patent specification, drawings, claims, and examination history of the patent (the patent filewrapper) and how the patent claims apply to the alleged infringing product or process.

In litigation, patent attorneys craft legal arguments concerning infringement and validity. They assess prior art to determine if a patent should have been granted in the first place or if the accused product infringes on existing patent rights. Their technical background enables them to work effectively with expert witnesses, translate complex scientific concepts into understandable terms for judges and juries, and challenge opposing experts' credibility.

Laypeople and attorneys not trained in patent law might not realize the significance of claim construction in patent cases. Patent attorneys engage in Markman hearings where the court interprets patent claims, a pivotal process that can determine the outcome of a case. They are also adept at navigating doctrines unique to patent law, such as the doctrine of equivalents, which allows for a finding of infringement even when the accused product does not literally infringe on the patent claims but performs substantially the same function in substantially the same way to yield the same result.

In essence, the combination of legal acumen and technical expertise allows patent attorneys to effectively enforce and protect intellectual property rights in disputes and litigation, providing a level of proficiency that non-patent attorneys lack in this specialized field.

Licensing Agreements and Transactions

One of their primary roles of a patent attorney is drafting and negotiating licensing agreements. They ensure that the terms accurately reflect the parties' intentions and that the scope of the license—whether exclusive or non-exclusive—is clearly defined. This precision helps prevent future disputes and protects the client's interests.

In transactions involving patents, such as acquisitions or asset purchases, a patent attorney conducts thorough due diligence. They assess the validity and enforceability of the patents in question, identify any potential infringements, and evaluate the overall strength of the patent portfolio. This analysis is crucial for determining the value of the patents and for making informed business decisions. Additionally, patent attorneys anticipate future developments by including terms related to improvements, modifications, and technologies closely related to the patents in the transaction. This foresight protects clients from unintended consequences that might arise from technological advancements or changes in patent holdings.

In summary, a patent attorney's expertise is invaluable in patent licensing and transactions. They provide a level of proficiency that goes beyond general legal knowledge, safeguarding clients' intellectual property assets and facilitating successful business outcomes.

What is a Patent Attorney?

A patent attorney has both legal and technical backgrounds. Patent attorneys are licensed attorneys that have a background in science and/or technology. A patent attorney must have at least a bachelor's degree in a hard science or engineering in order to be registered as a patent attorney. Specializing in patent law entails the core services of patent procurement, including performing patent searches, drafting and filing patent applications, and prosecuting patent applications before the US Patent and Trademark Office.

Beyond having a degree in a scientific or engineering discipline, an aspiring patent attorney must have a Juris Doctor degree from a law school, pass the bar exam, and pass the USPTO registration examination, commonly known as the patent bar exam. This certification allows them to represent clients before the USPTO. More importantly, a patent attorney must undertake extensive education and training in order to properly practice patent law, which is a highly complicated area legal discipline. Our patent attorneys have decades of experience and have a complete tool kit for assisting our clients. We also engage in continuing legal education and professional development, staying abreast of evolving patent laws and regulations.

The Value Provided by a Patent Attorney

For inventors and companies, the value of engaging a patent attorney cannot be overstated. The patent process is complex. The patent attorney's expertise helps clients avoid costly mistakes that could compromise their ability to protect and monetize their innovation. Patent attorneys also provide strategic value by aligning the patent strategy with the client's business objectives. We as patent attorneys provide insights on how to leverage patents to gain a competitive advantage, attract investors, and license patents and other intellectual property.

Patent attorneys also advise on patent infringement and litigation. In cases of infringement, we assist in enforcing patent rights or defending against allegations, thus safeguarding the client's interests.

In summary, as patent attorneys, we play a vital role in transforming an idea into a protected asset. Our legal and technical expertise not only help in securing patent protection but also add significant value by enhancing the commercial potential of the invention. Engaging a patent attorney ensures that inventors and companies can confidently navigate the complexities of patent law, ultimately maximizing the return on their innovations.

For more information, contact our office for a free consultation with a patent attorney who can guide you through the process.

This article is for informational purposes only and does not constitute legal advice.