What Do Patent Attorneys Do: Everything You Need to Know
What patent attorneys do is assist inventors through the patent application procedure and help draft a patent application that is more likely to get approved.5 min read
What Do Patent Attorneys Do?
What patent attorneys do is assist inventors through the patent application procedure and help draft a patent application that is more likely to get approved and will ensure the protection of the invention.
To begin with, patent lawyers enter an apprenticeship that enables them to master the skill of patent application. They’re required to know the patent laws in detail, including any revisions and updates.
It is a patent lawyer’s primary responsibility to oversee patent litigation and manage copyright and trademark infringement cases. They are the attorney who represents clients who are trying to get a patent for an invention.
Patent lawyers are able to compose and prosecute applications, give extensive guidance to people who wish to obtain patents, and take on patent infringement cases. Because of this, patent lawyers are required to have an extensive knowledge about technology in order to succeed in presenting their cases while keeping up with the latest trends in scientific advancements.
Patent lawyers tend to survey very technical aspects that affect infringement and validity but may find an exception with regards to engaging with the technology as they leave that task to specialists of the field.
Patent lawyers are not the ones doing the technical innovation; instead, they audit in a manner where they can give feedback to their inventors. Patent lawyers are highly rewarded with opportunities to preview the future of the technology industry while getting the chance to collaborate with inventors.
Patent law is quite broad in nature because there are constant changes in the law, so patent lawyers must stay updated with the trends. They have to study the products. Every invention, as well as its inventor, is unique. In order to write a fitting patent application, patent lawyers must fully understand why it exists and how it operates.
Patent applications are done collaboratively between the patent lawyer and the licensor for the duration of the prosecution process to produce favorable results.
Patent lawyers are required to act fast under financial and time constraints, so a strong sense of cognitive capabilities is necessary to be able to work efficiently while maintaining the ethical and professional outlook of the business.
In the process of creating an independent claim for a patent document, patent lawyers need to have a firm grasp of the invention so that they can state/define an invention in a manner that would give the best results in a single statement. They should also be careful to not use terms and phrases that could be distorted as any sort of leverage in another’s favor.
Also during this process, patent lawyers should be able to uphold every word written down. They’re also required to be able to give clear antecedents for all the technical jargon so that the scope of the claim is clear.
In addition, patent lawyers should be meticulous in anticipating loopholes that a competitor might miss during the drafting process about their products. They need to have a clear understanding about the current market trends to draft a competitive claim. They should also create leeway for amendments during the prosecution process.
As for billing for their services, they should put into consideration the time spent on a task as they are paid with regards to time.
When it comes to breadth of knowledge, patent lawyers should be familiar with patent law in various jurisdictions in the off chance they may work with inventors wanting to seek a patent application in more than one country.
They must also focus on clarity, as they’re required to enumerate the focal elements in the least amount of words to detect infringement easily within products. They must also be able to view the claim from an examiner's point of view.
Drafting patent applications and interviewing investors to attain disclosure for patent applications are also part of a patent lawyer’s obligations. They evaluate any rejections by the U.S. Patent and Trademark Office and draft responses.
They handle patent and trademark litigation, deliver cease and desist letters, and mediate settlements. Meanwhile, they must also learn about new inventions, make use of their scientific knowledge, and protect inventions under their purview with legal expertise.
Patent lawyers face the challenge of predicting what their client's goals are and creatively achieving them, which is different from the creativity used in a scientific perspective.
How Patent Lawyers Differ
A patent lawyer most typically will work in a team where the associates tend to do the tedious work and the partners manage everything as a whole while trying to keep the clients satisfied.
Large firms that work with individuals and small companies may not always give their best services, because they may have their junior patent attorneys who lack expertise working on their smaller clients’ cases. Some firms opt to have a good client base coming from the business industry due to the individual and small companies.
Not all patent lawyers will have the experience to create patent applications, which is bad for the licensor as it creates a facade of protection.
Patent lawyers may be classified into three areas of expertise:
- Patent Prosecution Attorneys
- Transactional Attorneys
Patent Prosecution Attorneys
Patent prosecution attorneys are mainly in charge of daily processes related to initial drafts, filing, and prosecuting patents and trademarks for clients. They may assist litigators and transactional attorneys in their tasks, as they are trained to be proficient in all capacities.
Patent prosecution attorneys are responsible for communicating with patent offices as well as other attorneys. They are more than capable to execute prior art searches, patent generation, and patent profile analysis. Prosecution attorneys usually have good technical know-how.
These prosecution attorneys do minimal traveling. Rather, they have strict schedules because patent prosecution has very strict compliance for deadlines, so there is a need to be able to multitask within the given time constraints.
Patent litigators may often play the role of a defendant or a plaintiff when handling lawsuits. They may or may not have deep technical knowledge, however.
Litigators should have high tenacity as they deal with long constricting hours before a trial.
Transactional attorneys are tasked with duties such as handling licenses, buying and selling profiles, and mediating licensing agreements to mutually benefiting both parties. Transactional attorneys may or may not have a deep technical knowledge, although the majority of them do.
In addition to these types of patent lawyers, there are also patent agents. Patent agents may prosecute patents even before going through the U.S. Patent and Trademark Office, but they must have passed the patent bar exam. Patent agents need to have an advanced degree in a scientific field to be able to acquire clients.
Important Facts About Patent Lawyers
The integral skills of being a good patent lawyer are as follows:
- Excellent oral and written communication skills
- Higher level of cognitive skills in terms of analytical thinking and problem solving
- Detailed researching skills
A lawyer's work environment may vary from private or corporate legal offices to one-on-one work with individual clients.
How to Choose the Right Patent Lawyer
Choose a patent lawyer who:
- Is well versed in patent law, which is a very specialized field of law
- Has good technical insight
- Has the capability to compose, discuss, and clearly express an extensive background in the fields
- Is very articulate and can put concepts into understandable and clear statements
- Has a strong cognitive understanding of inventions and their technical variables
- Has good writing skills for patent applications, which require legal knowledge, technical knowledge, the ability to simplify this information for their clients, and someone who can be precise and rebuttal quite easily
- Can write and assist you through a patent application process
If you need help finding a patent lawyer, you can post your legal need (or post your job) on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.