Patent Attorneys

Patent attorneys are counsels to corporations. Patent attorneys work begins with inventor describing his invention. This is to determine if the invention is patentable. Patent attorneys evaluate the utility, novelty and obviousness of the invention, and depending on the result, advises the client as to whether a patent application should be filed on the invention. During the evaluation phase, patent attorneys conduct in-depth investigation into the technical field involved, including study of the closest prior patents and references and a comparison with the invention to identify differences.

If the paten attorneys decide that there is a strong basis to apply for a patent, then a patent application will be drafted and filed in the USPTO. In the application, patent attorneys give includes a detailed description of how the invention is made and used, accompanied by drawings, and ends with a set of claims that will ultimately define the scope of the inventor's patent rights. After the application has been filed in the USPTO, it is assigned to a patent examiner. Through correspondence with the examiner, discussions in person or by telephone, and perhaps amendments to the claims, the patent attorneys seek to obtain favorable final action for the applicant. If the patent attorneys succeed, a patent is issued on the application. However, in case the examiner decides that the invention is not patentable, the applicant, with the lawyer's assistance, may appeal the decision to the USPTO's Board of Appeals. If the Board's decision is unfavorable, a further appeal may be taken by the patent attorneys to the U.S. Court of Appeals for the Federal Circuit.

The patent attorneys may also be called upon to file corresponding patent applications in other countries, increasing the area of patent protection the patent owner may enjoy if the invention is marketed worldwide. Although the actual filing and prosecution of these foreign applications are usually handled by foreign firms, the U.S. patent attorneys must have some working knowledge of the various patent laws and procedures in the major industrial nations of the world in order to render sound advice to the client.
After the patent is issued, patent attorneys may investigate and develop licensing opportunities for the patented product or process. Patent attorneys draft and negotiate license agreements that allow others to practice the invention, in exchange for appropriate compensation to the patentee.
In addition to the various tasks relating to the procurement and licensing of patents, patent attorneys are frequently called upon to advise and represent clients in related areas such as trade secret law, copyright law and trademark law. Patent attorneys are also called upon to secure permission for their clients to make use of intellectual property owned by others.