When businesses or individuals need to protect an invention, it is advisable to work with a patent attorney. This is a type of lawyer who possesses expertise in intellectual property law.
To become a patent attorney, a lawyer must pass a federal exam known as the patent bar exam granting them a license to represent clients in front of the United States Patent and Trademark Office (USPTO). This measures their knowledge of American patent procedures, ethical guidelines and federal rules and regulations. In addition, they must pass the State Bar exam for the state in which they operate.
Learn more about what patent attorneys do and how they can help secure and protect the property rights of inventors.
The Responsibilities Of Patent Attorneys
Patent attorneys prepare and file patent applications and represent clients in court for matters related to the patents they possess, such as infringement, re-examination and licensing.
Patent attorneys must have expertise in relevant technical areas such as engineering, chemistry or physics to ensure they understand their clients’ inventions. For example, computer science expertise may be needed to work with technology clients, while chemistry knowledge is essential for those representing pharmaceutical patents.
In addition to helping inventors obtain patents and protect their rights, patent attorneys can provide patentability opinions in court.
What Does A Patent Attorney Do?
A patent attorney assesses whether an invention is truly new and innovative to determine whether it is entitled to a patent. They are trained in the development of intellectual property and can help individuals and companies navigate the complex process of patenting their invention. Once a patent has been successfully obtained, they can work to enforce the rights of the invention when the inventor’s patents are violated.
Other duties that patent attorneys may carry out include:
- Managing intellectual property, such as fee payments and deadlines
- Investigating the state of an invention in patent
- Assessing the intellectual property rights of third parties and mitigating risks
- Providing advice on contract-related issues such as licensing
- Advising clients on designs, trademarks and inventions
- Dealing with the official registration and transfer of intellectual property rights
- Handling the prosecution and defense of violations against intellectual property rights
- Coordinating exam and application processes abroad
- Representing clients before bodies such as the European Patent Office, the World Intellectual Property Organization and the Swiss Federal Institute Of Intellectual Property
Does A Patent Attorney Have The Same Role As A Patent Agent?
It is important to note that a patent attorney is not the same type of professional as a patent agent. Although patent agents may perform some of the tasks that patent attorneys can, such as representing a client before the USPTO, they cannot perform in many other legal settings, such as the prosecution of patent infringement.
Do You Need A Patent Attorney To File A Patent?
Although it is technically possible to file your own patent application, the USPTO recommends that inventors hire a patent attorney to guide them through the process. However, the Patent Office does not regulate pattern attorneys’ fees or recommend specific attorneys.
Creating patents can be very challenging. The technicalities of the creation must be described accurately and efficiently, but it is equally important to express how the invention is different from existing inventions in the industry.
Patent law is considered a very technical field, and it is important to understand the nuances to ensure proper protection. For example, when patenting a prototype for an item that has been 3D-printed using a specific type of material, the patent only prevents other parties from making similar objects using the same material unless otherwise stated. Patent attorneys know the correct terminology required to ensure maximum protection and increase the chances of the patent being granted.
Some inventors may choose to create and submit their own preliminary patent application. This will provide them with a 12-month grace period during which they can work with an attorney to create an actual patent application. These preliminary applications are missing many of the formalities included in an official patent application and only serve the purpose of providing the inventor more time to get their legal paperwork in order.
What Is The Difference Between A Patent Attorney And An Intellectual Property Attorney?
Although patents are a type of intellectual property, inventors should keep in mind that there are differences between intellectual property attorneys and patent attorneys. An intellectual property attorney is a more general designation, and these lawyers do not have to pass the patent bar exam and are not necessarily licensed by the USPTO.
In addition, they are not required to possess specific technical expertise related to patents. Although all patent attorneys are intellectual property attorneys, not all intellectual property attorneys have taken the extra steps required to become patent attorneys.
Request A Consultation With The Washington, D.C. Patent Attorneys
The patent attorneys at METROLEX IP Law Group possess the knowledge and experience needed to ensure your inventions are protected under the law. Contact our legal team today to arrange a consultation.