Patent Attorneys: What They Do
Patent attorneys act as legal counselors of companies. When an inventor submits his invention, the patent attorney gets to start his work. The patent attorney reviews the invention and decides whether it is fit to be patented or not. It is his responsibility to evaluate if the invention is useful, unique, and relevant. Then based on his evaluation, he recommends to the client whether or not to submit a patent application for the invention. While evaluating the invention, the patent attorney needs to thoroughly investigate the technicality involved as well as previous similar patents, examine references and make a comparative analysis to discover any obvious differences.
The patent attorney gets to decide if it is suitable to apply for a patent or not based on his findings. So it is only when he has mounted a solid basis to support patent application will he file for patent at the USPTO. The application must include documents detailing the invention precisely, its usefulness together with the diagrams and illustrations, and definition of the rightful claims to the patent rights that may be awarded to the inventor. Once this application has been submitted, it is now in the hands of a patent examiner. The patent attorney keeps in contact with the examiner to discuss issues related to patent rights and claims and to negotiate for the best interest of his client.
In case where the examiner denies patent issuance based on his findings that a patent is not fit to be awarded for the invention, then the patent attorney will assist the applicant to appeal to the USPTO's Board of Appeals. If the board also rejects the appeal, then the applicant may present his appeal to the US Court of Appeals for the Federal Circuit.
If the patent applicant wishes to file patent applications in other countries, the patent attorney will be assisting him too. This process widens the coverage of patent protection and will enable the applicant to market his invention in several countries or even worldwide. It is usually foreign agencies who handle the process that foreign patent applications entail. It is imperative then for patent attorneys to be experts in international law as it applies to patents and inventions worldwide.
When the patent is approved and issued, the patent attorney takes care of the licensing issues regarding the patent. Then it is his duty to draft and discuss agreements that allow others to use or market the invention upon payment of a reasonable amount to the patent holder.
The job of patent attorneys does not only entail patent receiving and licensing, but also giving legal advice to clients, representing their clients with regard to trade secret law, trademark law, and copyright law. They may further seek permission for their clients that enable them to employ intellectual property that is governed by others.