A patent attorney is a lawyer with expertise in intellectual property law who specialises in securing and protecting an inventor’s property rights. Patent attorneys have passed a federal exam referred to as the “patent bar exam”.
This grants them a license to represent clients before the United States Patent and Trademark Office (USPTO). They have also passed the state bar exam that all attorneys must pass.
What is Patent Attorney
Patents are granted to inventors of unique, practical, and non-obvious inventions. Other countries may have different certifications or qualifications for patent attorneys, or have patent processes that may require no more than an individual with general legal credentials.
Responsibilities Of a Patent Attorney – Patent Attorney Job
Tasks vary to a certain extent depending on whether you’re working in private practice, advising private clients, or working for a large organization in the industry to protect their inventors. However, you’ll typically need to:
. Discuss inventions and processes with inventors or manufacturers and ascertain whether they will succeed in being granted patents.
. Suggest modifications or extensions to the definition of the invention.
. Ensure application and renewal deadlines are met.
. Carry out invention harvesting as part of a group to come up with a set of possible new invention ideas.
. Analyze scientific or technical documents, including previously granted patents, to assess whether an invention is new and innovative.
. Advise overseas attorneys on applications for foreign patent applications.
. Instruct on whether business activities will infringe on someone else’s patent rights.
. Deal with assignments of patents when a patent is sold or transferred.
. Keep up-to-date with legal developments in the intellectual property field.
. Advise on other intellectual property rights, e.g., designs or trademarks.
. Tutor and mentor trainee patent attorneys.
. Apply for patents from the Intellectual Property Office (IPO) and the European Patent Office (EPO).
. Prepare responses to reports from patent examiners.
. Write detailed technical descriptions of inventions in precise legal terms (patent drafts) to meet the correct legal standards
. Advise clients on how much their patent could be worth.
. Conduct litigation in proceedings at the EPO or in the Intellectual Property Enterprise Court (IPEC).
Patent Attorney Skills
A patent attorney may need a wide variety of legal and technical skills to understand and represent their client’s patents. These are some skills a patent attorney may use:
. Technical Knowledge
Many patents are highly specific and detailed, as inventors constantly develop new ideas and variations on existing concepts. A patent attorney must be able to understand these inventions and other inventions to identify even the smallest difference.
. Legal Representation
Patent attorneys represent their clients in court when they need to settle intellectual property disputes.
. Legal And Scientific Writing
An attorney creates patent applications, so they need to be fluent in legal and scientific language to describe inventions. They also need to read and understand other patents to make sure no one has already patented an idea and file the correct court documentation for any legal activity needed to protect intellectual property.
. Legal Advising
As a lawyer in good standing, a patent attorney can provide legal advice on contracts, licenses, patents, and trademarks and how to use those tools to protect ideas and property.
Patent Attorney vs. Patent Agent
One should not confuse a patent attorney with a patent agent. In the United States, patent agents can perform many of the same tasks as patent attorneys, including representing clients before the USPTO, but not in other legal settings, such as prosecuting a patent infringement.
While you can file a patent application yourself, the USPTO recommends hiring a patent attorney or agent. If you need a patent attorney, use the USPTO website’s search list of those licensed to practice before the USPTO. The patent office does not recommend patent attorneys or regulate patent attorneys’ fees.
How To Become a Patent Attorney
Here are some steps required to be a patent attorney:
. Earn A Science or Engineering Degree
First, a potential patent attorney earns a four-year college degree, usually a Bachelor of Science degree, in an engineering or science field. This can provide the technical knowledge base for you to understand the patents you’re going to be working with, so you can choose a major in a field you’re interested in. If you can choose a field that is developing quickly, you may find a greater demand for specialists in your area as a patent attorney.
If you have a bachelor’s degree in a field that is not science or engineering, some graduate studies in science or engineering may be a substitute. The purpose of this study on the way to becoming a patent attorney is to qualify you for the U.S. Patent and Trademark Office (USPTO) exam, so if you decide to pursue graduate study, be sure you take the right credit hours to qualify.
. Take the LSAT
You’ll need to take the Law School Admission Test. It’s a two-part exam, with a multiple-choice section about reading comprehension, analytical reasoning, and logical reasoning and a written portion involving an essay from a randomly selected prompt.
. Attend Law School
After passing the LSAT, you’ll attend an accredited law school to get a juris doctor degree. Many law programs offer concentrations in copyright and trademark, intellectual property, and patent law. If you attend as a full-time student, the degree usually takes three years to complete, although part-time evening programs are available that can take four or five years.
. Pass The State Bar Exam
You’ll need to pass the bar exam to become a lawyer in the state you want to practice in. Depending on where you take it, the bar exam varies significantly, but most states use at least some bar exam components developed by the National Conference of Bar Examiners. These exams include multiple-choice questions and longer tasks developed to test candidates’ legal approaches to situations.
. Pass The Patent Bar and Register with the USPTO
To practice patent law, you would register with the USPTO. This involves submitting an application and passing the multiple-choice exam, also called the patent bar exam. Some coursework or experience in science or engineering is a prerequisite for this exam, but a bachelor’s degree may be adequate. Graduate-level work does not automatically qualify you, but if it meets the specific credit-hour requirements, it may be enough.
. Consider Additional Specialized Education
If you want to extend your specialization, you might consider a master of laws degree, or LL.M., in a particular area such as multinational intellectual property law or patent litigation. These degrees usually take one year of full-time study to complete.
Frequently Asked Questions
How Do You Select the Correct Patent Lawyer?
To do respectable patent work, you need to have a good technical understanding. A qualified patent lawyer needs to have the rare ability to explain, clarify, and simplify. Writing a good patent application requires the marriage of expansive legal and technical knowledge with the ability to clearly and concisely explain complex concepts in a way that can withstand challenges from the nation’s leading patent attorneys.
Do You Need a Patent Lawyer to Get a Patent?
It is not required to have a patent lawyer to obtain a patent. An inventor can file a patent on behalf of the invention. However, it is not a good idea due to the difficulty and legality of obtaining a patent.
Creating a patent can be difficult. You don’t only need to accurately and efficiently describe the technicalities of your creation, but you also need to protect your valuable IP by ensuring that you express how your invention is different from existing inventions in your industry.
Patent law is very technical. Even if an invention is easy, writing your patent can be pretty risky.