Procurement
What is a Patent Prosecution Lawyer?
A patent prosecution lawyer is a legal professional with a technical background and a specific license from the United States Patent and Trademark Office (USPTO) who files patent applications and works through the patent application process on behalf of inventors, businesses, and organizations with a view towards protect their innovations by securing patent rights. These attorneys are knowledgeable in patent law and assist clients in drafting, filing, and prosecuting patent applications before the USPTO or other international patent offices.
Obtaining a patent is an essential step for individuals and companies looking to safeguard their inventions. A patent grants its owner the exclusive right to prevent others from making, using, importing, offering to sell, and/or selling a product or service within the scope of the patent for a specific period of time (usually about 17 years). This protection encourages innovation and provides a competitive edge in the marketplace. Navigating the patent application process is complex, which is why an experienced patent prosecution attorney is critical to have on the team.
The Role of a Patent Prosecution Lawyer
Patent prosecution lawyers guide clients through each stage of the patent process, providing valuable insights, guidance, and work product. Their responsibilities include evaluating the patentability of inventions, drafting detailed patent applications, communicating with patent examiners, and preparing and filing the required paperwork in the USPTO as part of the application process.
Some of the key functions of a patent application lawyer include:
- Assessing Patentability
Before filing a patent application, a patent lawyer may (if the client wants) conduct a patentability search to determine whether the invention is likely to be eligible for patent protection. This involves reviewing existing patents, publications, and prior art to confirm that the invention is novel and non-obvious.
The lawyer assesses the uniqueness of the invention and determines whether it meets the key requirements of patent law: novelty, non-obviousness, and utility.
- Drafting the Patent Application
A critical task of a patent prosecution lawyer is to prepare the patent application itself. This document must be drafted to describe the invention in sufficient and substantial detail to meet applicable rules and requirements.
The patent application includes sections such as the abstract, background, detailed description, and, most importantly, the claims. Drafting the claims is a mix of science. It is science in that it is a highly technical process that requires precise language to strike a balance between protecting the invention and adhering to patent law, but it is also art in terms of crafting a set of claims that accounts for possible embellishments on the invention that competitors could deploy in an effort to avoid infringement.
- Filing the Patent Application
After drafting the application, the patent lawyer files it with the appropriate Patent Office, such as the USPTO, International Bureau for a PCT application, or through a foreign associate in the IP Office in a specific country. Filings include submitting numerous forms, fees, and documentation that includes the application itself and technical drawings for the invention described in the application. In some cases, a U.S. provisional patent application may be filed first to secure a “patent pending” status for up to one (1) year before a complete, “non-provisional” or PCT application must be filed. This is a common strategy for regular inventors as well as startup companies.
- Prosecuting the Patent Application
After filing, the patent application enters the prosecution phase, during which a patent examiner reviews it to determine its eligibility for patent protection. This often involves a back-and-forth exchange between the patent examiner and the patent attorney, with office actions issued to request clarifications or modifications, or to suggest that the invention described in the application may not be patentable because of prior art.
The patent lawyer communicates with the Patent Office, responds to office actions, amends claims, presents arguments for patentability, and essentially negotiates with the patent examiner to overcome objections and rejections that may be raised.
- Appealing Rejections of Patent Applications
In cases where a patent application is under a final rejection, the patent lawyer may file q request for continued examination (RCE) to continue attempting to persuade the examiner that the invention is patentable. On the other hand, the lawyer may simply appeal a final rejection to the Patent Trial and Appeal Board (PTAB), which is an administrative body within the USPTO that handles appeals of rejected patent applications, among other things.
Why Is a Patent Prosecution Lawyer Important?
The patent application process is intricate, and even small errors can lead to delays, rejections, or loss of intellectual property rights. A patent prosecution lawyer offers the essential knowledge and experience-based guidance throughout the process.
Here are several key reasons why a lawyer licensed to prepare and file patent applications is important:
- Strong Legal Protection
One of the primary roles of a patent prosecution lawyer (aka patent application lawyer) is to provide legal protection for the invention that is as comprehensive as possible. By drafting a detailed description and carefully constructed claims for the invention, the lawyer works to shield the invention from competitors and provide the client with a competitive edge.
- Avoiding Mistakes in the Patent Application Process
The patent application process has many technical requirements and deadlines. Missing a deadline, submitting incomplete documentation, or making mistakes in the application can result in rejections or costly delays. A patent application lawyer helps clients avoid these pitfalls.
- Navigating Patent Office Procedures
Patent examiners often issue office actions that require responses or amendments. Patent application lawyers are skilled in navigating these procedures, responding to examiner inquiries, and working to secure patent approval.
- Maximizing the Value of the Patent
A well-drafted patent application that issues as a patent may significantly increase the value of an invention by providing broad patent protection. Experienced patent application lawyers understand how to structure claims to cover not only the current invention but also potential future developments or other design around efforts.
- Protecting Against Infringement and Litigation
A carefully drafted patent may protect against future infringement and reduce the risk of legal disputes for the inventor’s product where the invention has already been compared to the prior art through the application process. In the event of infringement of one’s patent, a patent lawyer with experience in litigation may be called upon to enforce the patent and defend the client’s rights.
Conclusion
A patent prosecution lawyer is a valuable partner for anyone seeking to protect their innovations and secure a competitive edge through patent rights. From assessing the patentability of an invention to drafting, filing, and prosecuting the application, these legal professionals provide crucial support through the complexities of the patent process. By preparing the patent application thoroughly and providing strong legal protection, patent application lawyers help safeguard intellectual property and maximize the commercial potential of inventions.
