Understanding Patent Law and the Role of a Patent Attorney

A patent is a legal protection for inventions, designs, products and processes that are novel, “non- obvious,” and useful. The policy rationale behind patents is that society benefits when innovators can pursue useful inventions with the knowledge that their creations will be protected. In essence, a patent grants a limited-time monopoly—during which an inventor ostensibly might generate profits to cover his investment costs. In return for this protection, the patent-holder must make a detailed disclosure of his invention—advancing the state-of-the-art, and thus benefiting society.

If the patent law sector is unfamiliar to you, perhaps this rough categorization will serve as a useful starting point. Consider the patent law practice in three functional areas: patent preparation, patent protection and patent administration.

Patent Preparation:

Practitioners in this area engage with inventors (both individuals and companies) who seek legal protection for their work. These Patent Attorneys conduct research and analysis to determine the state-of-the-art for a current technology. They work with inventors to demonstrate differences between that client’s new invention and the IP protections held by competitors.

Patent Protection:

For the people and organizations who already hold patents, a primary concern is enforcement of those intellectual property protections. They rely on Patent Attorneys to monitor competitors’ technologies that may be infringing on their patents—and then seek legal relief and remedies.

Patent Administration:

The patent system requires a “referee” — an institution to set standards, grant protections and arbitrate disputes. In America, that organization is the United States Patent and Trademark Office (USPTO) — which assigns a Patent Examiner to read each patent application and to review claims against existing patents.

Employment in Patent Law

The most commonly held titles in the area of patent law include: Patent Attorney; Patent Agent; and Patent Examiner (also known as a Patent Clerk).

Patent Attorney:

Qualifying as a Patent Attorney has the following requirements:

  • Law degree
  • Member of the bar in at least one jurisdiction
  • Must be an attorney in good standing
  • Must have successfully completed the USPTO certification examination. (This test—commonly referred to as the “Patent Bar”—assesses a candidate’s knowledge of USPTO’s legal rules and practices. It does not test for knowledge of science and technology.)

Note: Only a Patent Attorney can represent clients’ patent matters (application or protection) in a court of law.

Patent Agent:

Non-attorney consultants also play an important role in the processes of gaining and/or protecting patents. These advisors possess specialized knowledge in scientific and technical matters plus a deep understanding of patent law.

Qualifying as a Patent Agent requires that an individual:

  • Must hold a degree (or its equivalent) in engineering or physical sciences
  • Must pass the (USPTO) “Patent Bar” certification examination

USPTO Patent Examiner (Patent Clerk):

Another career opportunity is working for the federal government—as a Patent Examiner in the USPTO. Qualifying as a Patent Examiner requires that an individual:

  • Is a U.S. citizen
  • Passes a background examination
  • Holds a college degree in engineering or physical sciences

Note: Although a law degree is not required, advancement to certain USPTO civil service ranks does require Patent Examiners to pass an examination equivalent to the Patent Bar.

Personal Attributes for Success in Patent Law

For a successful and satisfying career in Patent Law, the credentials mentioned above are necessary, they alone are not sufficient. The following personal attributes also are essential:

Attention to Detail

Every lawyer’s core skill set requires attention to detail and nuances in language. In many patent law positions, however, highly detailed reading, analysis and writing are the job—day after day, month after month.

This requires a comfort with solitude and an ability for sustained concentration and focus.

Grasp of Technical Material

Technology is at the heart of most patent law legal work. (This explains the field’s overwhelming preference for individuals with training in biology, chemistry, computer science, engineering or physics.) Consequently, one must be well-grounded in the relevant technological and scientific subject matter—and able to remain current with the inevitable changes.

Other core capabilities will vary with the particular type of patent law being practiced:

Litigators, for example, benefit from a highly competitive disposition—an intense will-to-win that can fuel the grueling research and analysis needed to prevail in a patent dispute. (Note also that litigation requires close attention to procedural matters — as opposed to technical ones.)

In contrast, collaboration and cooperation skills are essential for attorneys representing entrepreneurs and start-up companies. Here, interpersonal skills enable attorneys to interact effectively with the engineers, scientists, computer programmers and technical experts who are their clients.

In Patent Law, Complexity Means Opportunity

If you’ve got “the right stuff” to qualify for a patent law position, here’s one other factor to consider: Is this work is a good fit with who you are?

Make a point of speaking with a sizable sample of professionals already working in this field. Ask what they like (and don’t like) about the work. Also, give them an honest appraisal of your own capabilities and work preferences.

In sum: Success in Patent Law requires exceptional ability to analyze, focus, and apply legal knowledge to complex technical subject matter. If you’re up to the challenge, here’s the good news: Complexity can mean opportunity—especially for those legal professionals who build a patent law career around specialized subject matter.

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