United States Patent Attorney
What is a Patent Lawyer?
A patent lawyer is a lawyer in the United States who has both fulfilled the necessary requirements to practice law in one of the states or territories of the U.S. and has also passed the federal Patent Bar Exam administered by the United States Patent and Trademark Office (USPTO).
In order to become a registered patent lawyer, a lawyer must prove to the USPTO that he or she has an appropriate technical background to work on patents and patent law. Specifically, the requirements typically involve obtaining an undergraduate degree (or higher) in a technical field, such as engineering. However, a complete list of qualifications is available on the USPTO's website at http://www.uspto.gov/ip/boards/oed/exam/registration.jsp.
Why use a Patent Lawyer?
Patent lawyers are uniquely qualified to help their clients apply for patents, receive patent registrations, provide legal opinions regarding patents and patent law and defend and enforce patent rights. Regular lawyers who are not registered patent lawyers can not represent clients in any matters or proceedings before the USPTO, including the filing or routine prosecution of patent applications. While patent agents can represent clients before the USPTO, they do not have the ability to provide legal opinions or defend or enforce patent rights in the U.S. court system.
Thus the use of a patent lawyer can be a smart, safe decision that allows you to receive legal counsel regarding all aspects of patent law from a single source. This can allow you to reduce legal expenses and avoid potential confusion when trying to deal with separate patent agent and lawyer entities.
What can a Patent Lawyer do for you?
A registered patent lawyer can help you in every step of the patent process. For example, while the term "patent application" may sound like something that is a relatively simple endeavor, it can be quite the opposite. Patent applications are typically detailed technical documents as the U.S. Patent Statute prescribes them to be. Specifically, patent applications must contain a detailed write-up of an invention or technology that describes and claims it so that it may be made, used or practiced by a person having ordinary skill in the art. While an inventor or inventors will always know their invention best, it is the patent lawyer who knows the patent-specific legal terminology to use in a patent application. Patent lawyers are skilled in interpreting the rules of the USPTO and the case holdings issued by the Federal Court System. Patent lawyers thus know how to properly phrase a patent claim so as to try to obtain the broadest possible scope of patent coverage. Additionally patent lawyers understand the words and phrases that should be used in a patent application and description of technology and the words and phrases that could potentially lead to a patent application being unnecessarily narrowed or rejected.
Further, after a patent application is filed, a patent lawyer will guide clients through the correspondence and responses issued by the USPTO and help prosecute the patent in order to get claims allowed and have the patent issues. A patent lawyer can also file appeals and represent clients before the Board of Patent Appeals and Interferences and strategize on any of a number of post-issuance proceedings, such as ex parte and inter partes reexaminations and reissues.
Patent lawyers can also provide their clients with legal opinions to help counsel clients on what action to take or avoid. Examples of opinions include patentability opinions where a detailed search is conducted and exemplary claims are drafted to determine if a client's idea would be patentable, freedom to operate and non-infringement opinions, where a detailed search is conducted to determine if a client's technology may infringe on another party's intellectual property or if it already described in the prior art, and infringement opinions, where a potentially infringing product is compared to a client's patent or patents to determine if it infringes the claims of the patent or patents. Still further, patent lawyers can provide clients with counsel as to whether they should pursue a legal claim of infringement against a third party or help defend a client against a claim of infringement.