What Does a Patent Lawyer Do?

In today's rapidly evolving world, innovation drives progress. Whether it's groundbreaking technology, game-changing pharmaceuticals, or revolutionary design, inventors are constantly pushing the boundaries of what's possible. However, with innovation comes the need for protection. This is where a patent lawyer comes into play.

A patent lawyer works behind the scenes, safeguarding the rights of inventors and ensuring that their groundbreaking ideas are shielded from infringement. But what exactly does a patent lawyer do, and why are their roles so crucial in our innovation-driven society?

What is a patent?

Before delving into what a patent lawyer does, it's essential to understand what a patent is. A patent is an exclusive right granted to an inventor or creator to sell, make, or use their product or process. To qualify for a patent, the product or process must provide an innovative way of doing something or a new technical solution to a problem.

To apply for a patent, an inventor must provide technical information in a public application submitted to the appropriate authority in the country where they wish to obtain exclusive rights, such as the United States Patent & Trademark Office (USPTO). Once a patent application is approved, an invention cannot be commercially produced, used, distributed, imported or sold by others without the patent owner's express consent.

Patents are considered territorial rights, meaning these exclusive rights are granted only in the nation where the patent application was approved. Patent protection is also granted for a limited time. For example, in the United States, patents are valid for up to 15 and 20 years, depending on the specific type of patent granted.

Services Provided by a Patent Lawyer

A patent lawyer must have both a technical and legal background. Their primary mission is to help inventors secure patents for their inventions and innovations. These highly experienced legal professionals provide critical support in navigating the intricate legal landscape of patent law, aiding inventors in the application process and providing counsel on patent strategy, enforcement, and defense.

Services provided by a patent lawyer include:

• Patent Search and Analysis
  Conducting thorough searches of existing patents to determine the novelty and patentability of an invention. This involves assessing whether the invention meets the legal criteria for patent protection.
• Patent Application Preparation
  Drafting patent applications that describe the invention in detail, including its technical specifications, claims, and drawings, in compliance with the specific requirements of the patent office.
• Filing and Prosecution
  Submitting patent applications to the relevant patent office and engaging in ongoing correspondence with patent examiners to address questions, objections, and modifications to the application. Navigate the process to successfully obtain patents.
• Patent Strategy
  Advising clients on the best strategy to adhere to intellectual property law and protect their IP, such as choosing between utility patents, design patents, or international patent filings.
• Infringement Analysis
  Evaluating potential patent infringements by analyzing products or technologies to determine if they violate existing patents, trademarks, or copyrights.
• Patent Litigation
  Representing clients in patent infringement lawsuits or defending them against such claims in court.
• Licensing and Transactions
  Negotiating and drafting licensing agreements, technology transfer agreements, and other contracts related to patents, enabling inventors to profit from their inventions.
• Intellectual Property Portfolio Management
  Managing a portfolio of patents for clients, including renewals and maintenance fees, and ensuring that patents comply with local and international laws.
• Client Counseling
  Providing legal advice and counseling to inventors and businesses regarding intellectual property rights, patent strategies, and risk management.
• Due Diligence
  Conducting intellectual property due diligence for mergers, acquisitions, or investments to assess the value and potential risks associated with a company's patent portfolio.

How Does Someone Become a Patent Lawyer?

Because a technical knowledge base is needed to understand patent applications, a patent lawyer will often earn a Bachelor of Science degree in an engineering or scientific field prior to attending an accredited law school. While all prospective lawyers must take and pass their state's bar exam once they've graduated from law school, an aspiring patent lawyer must also become registered with the USPTO, a process that involves:

• Submission of Documents
  The USPTO requires that candidates submit transcripts from scientific or engineering study, a completed application form, and proof of citizenship or Visa status.
• Passing the Patent Bar Exam
  This 100-question multiple-choice exam is intended to evaluate an applicant's knowledge of patent laws, rules, and procedures as related in the MPEP (Manual of Patent Examination Procedure), as well as their ability to properly analyze factual situations and apply the patent laws, rules, and procedures to render valuable service, advice and assistance to patent applicants in the preparation and prosecution of their patent applications. To pass and obtain a license to practice, applicants must correctly answer at least 70% of the questions.
• Pay the Registration Fee
  Once an applicant passes the Patent Bar Exam, they'll submit the required registration fee to the USPTO and become a legally registered patent lawyer.

A patent lawyer should not be confused with a patent agent. While both must pass the Patent Bar Exam and become registered with the USPTO, a patent agent has not attended law school, has not passed a state bar exam, and cannot provide any legal advice, including advice on patent licensing or patent infringement. Only a patent lawyer can draft contracts or non-disclosure agreements or provide representation in the event of patent litigation.

Do I Really Need a Patent Lawyer?

Inventors are permitted to file patent applications with the USPTO on their own. However, a patent lawyer often possesses experience in a particular area of patent law, such as pharmaceuticals, life sciences, or software patents. Writing and prosecuting patent applications is extremely complicated and requires considerable research, even when the invention isn't technically complex. Some of the tasks involved include:

• Determining the patentability of an invention, which requires showing that it is useful, innovative, novel, and non-obvious.
• Drafting and filing all applicable application documents, including descriptions, claims, and drawings.
• Performing global patent research to rule out potential infringement, both in the United States and overseas.
• Filing the regular or provisional patent application.
• Interacting with USPTO examiners during the application examination process.

This time-consuming process requires the strong writing skills typical of a patent lawyer, including proficiency with technical and legal jargon and deep familiarity with the USPTO's strict rules and deadlines. A patent attorney can also help an inventor identify which patents their invention might be eligible for and whether they should apply for more than one. They'll also be able to provide insight into which patents stand the best chance of approval and determine which will allow the inventor to derive the most value from their invention.

An experienced patent lawyer is also essential for negotiating and drafting license, non-disclosure, and other appropriate agreements for investors seeking to capitalize on their inventions. They are also necessary for enforcing patent rights and will know how to make a compelling case to a judge and jury should an infringement lawsuit go to trial.

Because they're required to have a solid technical and legal background, registered patent lawyers are uniquely qualified to assist investors applying for or seeking to enforce patent rights.

To learn more about patent law, be sure to check out the World Intellectual Property Organization (WIP), the leading global forum dedicated to IP policy, services, information and cooperation.

If you need assistance with a patent-related matter, Axiom offers access to the world's deepest bench of on-demand legal talent. Our bench includes hundreds of intellectual property lawyers with extensive experience with patents and other intellectual property issues.

Start your search for legal talent today.

Explore our network of attorneys or contact us to find an experienced patent lawyer.

Axiom is not a law firm and does not provide legal advice. Our clients' legal teams supervise the legal work of the Axiom lawyer.

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