Inventors are, almost by definition, smart people with a deep understanding of their technological specialty. Registered patent attorneys, while required by U.S. Patent and Trademark Office rules to have a technological background, are never going to know your invention as well as you: the inventor. That being said, it is rare for even the most prolific and successful inventors working for large and sophisticated companies to tackle the patent process without the assistance of a registered patent attorney.
While there are many reasons a good patent attorney can be critical to successfully patenting an invention, here are seven of the most common:
1. Understanding U.S. Patent Law
U.S. patent law is a highly specialized field, governed by both Title 35 of the United States Code and detailed rules and practice guidelines implemented by the U.S. Patent and Trademark Office. These laws, rules and guidelines will govern how patent attorneys interpret claims to your invention and compare those claims to the “prior art,” such as previously issued patents and published patent applications from the U.S. and abroad, as well as other electronic or physical publications predating your invention.
Key points of patent law can sometimes be counter-intuitive; for instance, many inventors are surprised to learn that a patent examiner is allowed, under certain circumstances, to deny patent protection to an invention even if it is new and cannot be found in any single piece of prior art. In such cases, a patent examiner will try to make the case that an invention is “obvious” by combining elements from two or more pieces of prior art. In these cases, the obstacle to obtaining a strong patent is often not a question of getting a patent examiner to properly understand the technology, but rather of identifying the best legal ground to rebut the patent examiner’s case for obviousness. This is a specialty of the patent attorney.
2. Understanding the Process
Before you even get to argue with a patent examiner over the patentability of the invention, a patent application must be prepared and filed that discloses the invention in sufficient detail, has all of the parts in the form prescribed by the Patent Office rules and guidelines, is accompanied by the proper supporting documents (like inventor oaths/declarations and application data sheets) and includes payment of the appropriate fees. Something as simple as paying the wrong fee can jeopardize the validity of a future patent. Missing a requirement in the boilerplate of a Patent Office communication can result in abandonment of your patent application before it even gets assigned to a patent examiner. Once the patent examiner gets involved, there are still somewhat esoteric requirements like restriction between patentably distinct claims, compliance with the duty of disclosure, the prohibition on the entry of “new matter” and the need for enablement of all claims that the patent applicant will need to successfully manage.
Even after a patent application is allowed, questions often arise about matters like patent term adjustment and the filing of continuing applications that can have a major impact on the duration and strength of patent rights afforded to the inventor. Patent attorneys and their highly-trained legal staff will decipher the “patent-ese” and navigate you to the end of the process.
3. Preparing the Application
The patent attorney’s knowledge of patent law and the administrative process come into play well before your patent application is filed. With the experience gained from prosecuting hundreds of patent applications, your lawyer can work with you to identify those elements of your invention most likely to lead to successful claims and structure the patent application to highlight those elements while still pushing for the broadest protection possible.
Many times, performing a comprehensive pre-filing patentability search will be part of this preparation, which can help anticipate grounds of rejection likely to be raised by a patent examiner and allow claims to be crafted to proactively address them.
The patent “specification,” which describes the invention in detail, should be crafted to support the claims – not only reciting a laundry list of components, but highlighting those elements and combinations likely to afford the broadest protection. Patent attorneys, including those at Allen, Dyer, Doppelt, & Gilchrist, are also aware of special challenges facing some types of inventions – like those in certain biomedical fields and software-implemented inventions – where how the invention is presented and claimed can be crucial to its eligibility for patent protection, regardless of whether it is new and not obvious.
4. Identifying the Best Type of Protection
The most common type of patent is the “utility” patent, which protects the functional aspects of an invention. However, the U.S. actually grants three different types of patents. In addition to utility patents, an inventor can apply for a design patent and a plant patent. Plant patents protect, with certain limitations, distinct and new plant varieties. Design patents protect the ornamental appearance of an “article of manufacture” – which is basically a way of saying that the design must be applied to something (like a lamp, a chair, or even a computer-icon), as opposed to simply being a work of art in the abstract. These types of patents are not mutually exclusive – your invention might be eligible for more than one type of patent. A good patent attorney can help identify not only which type or types of patent you are most likely to get, but can also help identify how each type can generate value for your invention. Additionally, most foreign countries offer these same types of patents or variations thereon. Patent attorneys experienced with international filing and working with their foreign counterparts can help you protect your invention all around the world.
5. Experience with Patent Litigation
Good patent attorneys, particularly those with experience at full-service intellectual property law firms, have experience not only getting patents for clients, but have also been involved with asserting issued patents against infringers and defending those accused of infringement. This knowledge is not just helpful when you are looking to assert your patent or defend challenges to its validity, but when drafting a patent application in the first place and then when prosecuting the application before a patent examiner. An attorney at an experienced intellectual property law firm understands how judges and juries are likely to look at different parts of patents, as well as the sometimes paramount significance that arguments made before the Patent Office can have on the future interpretation of patent claims.
6. Relevant Legal Advice
To be successful, it is not enough for inventors and patent owners to get patents. A good patent attorney can help negotiate and draft license and assignment agreements to capitalize on the value of a patent, as well as advise on options for enforcing patent rights once infringed.
Also, patents are usually not the only form of potentially valuable intellectual property the inventor or business has. A patent attorney can also help identify when other forms of intellectual property protection, such as trade secrets, trademarks and copyrights will supplement the protection afforded by patents. A full-service intellectual property firm will have the expertise to help you obtain and enforce all of these types of protection.
7. Your Time is Valuable
Without question, many inventors could become expert patent prosecutors – but is that what you really want to spend your time doing? While your patent attorney will still want the benefit of your input and expertise throughout the patent process, it will not need to be your constant occupation. The time you don’t need to spend learning the intricacies of patent law and practice is time you have to focus on further developing your invention, inventing new things, collaborating with other experts at your company and in your field, bringing your inventions to market, and ultimately enjoying the fruits of your creativity.
Ready to start working with an intellectual property law firm? Contact a patent attorney in Orlando, Jacksonville, Winter Springs or Miami at Allen, Dyer, Doppelt, & Gilchrist, P.A today so you can get back to the business of inventing.
About the Author
Justin Sauer practices in all areas of intellectual property law, representing a wide range of both national and international clients in connection with the acquisition, transfer, enforcement and defense of their intellectual property rights. Justin primarily practices out of ADD+G’s Orlando office.