What is a Patent Attorney?

What is a Patent Attorney?As a Patent Attorney, people have no idea what we do…


Once you have that great invention, your next step is to look for a great patent attorney: A patent attorney who not only understands your invention, but can help you through the patent process. 


To patent something, a good patent attorney needs to understand how something works, how it operates and what it can and may do.  We often have to get inside an invention and look at it from all sides to consider what aspects are the most beneficial for patent protection. 


A true patent attorney is not a typical attorney; we see things a little differently than other types of attorneys.  We like to roll-up our sleeves, see how things work and play around with them so that we can better describe them during the patent process.  This also helps the inventor think about alternative aspects of the design and process that may also be eligible for patent protection.  That is why a good patent lawyer is a bit of a geek.  They should have a good technical understanding in general, but most importantly a technical understanding of your invention. To be called a patent attorney, they must have a technical or scientific degree, in addition to a law degree and pass a specialized exam for patent attorneys. 


Once the patent attorney is familiar with your invention, they may suggest a patent search or perform a patent search to look for other similar inventions that may have been patented. If a patent is found, which is fairly common, the patent attorney may provide some advice regarding the likelihood of obtaining a patent.  While, there are no guarantees of patentability, a particular prior patent may help you focus on one aspect of the invention or maybe indicate that a patent may not be possible.  While the patent search may be costly, the results can often be invaluable because they help you refine or focus your invention at the early stage of the process, thus avoiding significant costs down the road if a prior patent renders the invention unpatentable. 


The Patent


If a patent is desired, then the patent attorney will begin working on the patent application which if necessary will include drawings to illustrate the novel and unique aspects of the invention.  In addition, to drawings, the patent application will include a specification which is a description of the “best mode” and “preferred embodiment” of the invention. The specification will provide a detailed description of the unique features of the invention as well as the best way to operate the invention such that a person have particular technical understanding of the invention will understand how to make and use the invention as well as the best way known by the inventor to actually operate the invention. 


In addition to the specification, the patent application may include one or more “claims.” Claims are the most important part of the application because they define what you receive in exchange for your complete description of the invention in the patent application.  You give to the public knowledge of the invention and in return, if the patent office allows it, you receive for a limited time, the exclusive right to make, use, sell and import the invention into the United States. A patent lawyer has the necessary knowledge to draft claims meant to cover the unique aspects of the invention. 


Once the patent application is complete, the patent attorney will submit the patent application to the U.S. Patent Office. After submitting the application, you have to wait for the patent application to work its way through the patent office, until a patent examiner receives the patent and reviews it.  During the time the patent works its way around the patent office, the invention covered by the patent is “patent pending” and may be marked as so.  Once an examiner does finally review the patent application, he or she may “allow” (approve) the application or reject the application on the grounds that it is too similar to an earlier invention or that the application is problematic.


Most patents are rejected on first application, and this is not uncommon or the end of the process.  If rejected, the examiner will submit an office action, which is simply a letter to the patent attorney explaining the basis for the rejection and providing information about the patents which the examiner uncovered during the patent examination.  If desired by the inventor, a patent lawyer may respond to these issues with an amendment and a response explaining why the invention should be allowed even though the examiner rejected it.  Like all people, patent examiners vary.  Some examiners try to find a compromise, others are difficult to work with.  There is no guaranty which type of examiner you will have or what objections they will have in advance.  If a response if filed, the patent examiner will review the response and either approve the amended application, reject the application or negotiate with the patent lawyer until a compromise is achieved.  Alternatively, the inventor may simply decide not to file a response and abandon the patent application.  If the application is abandoned, a patent will not be obtained. 


The patent process is expensive and can take many years to achieve.  At the Intellectual Property Center, we try to make the patent process easy by providing an initial consultation where you can meet with one of our patent attorneys even before you decide to move forward with a patent on your invention.  If you would like to schedule an initial consultation, please contact our office at 1-888-472-0020.