Patent Attorneys
Patent attorneys are counsels
to corporations. Patent attorneys work begins with inventor
describing his invention. This is to determine if the invention
is patentable. Patent attorneys evaluate the utility, novelty
and obviousness of the invention, and depending on the result,
advises the client as to whether a patent application should
be filed on the invention. During the evaluation phase, patent
attorneys conduct in-depth investigation into the technical
field involved, including study of the closest prior patents
and references and a comparison with the invention to identify
differences.
If the paten attorneys decide
that there is a strong basis to apply for a patent, then a
patent application will be drafted and filed in the USPTO.
In the application, patent attorneys give includes a detailed
description of how the invention is made and used, accompanied
by drawings, and ends with a set of claims that will ultimately
define the scope of the inventor's patent rights. After the
application has been filed in the USPTO, it is assigned to
a patent examiner. Through correspondence with the examiner,
discussions in person or by telephone, and perhaps amendments
to the claims, the patent attorneys seek to obtain favorable
final action for the applicant. If the patent attorneys succeed,
a patent is issued on the application. However, in case the
examiner decides that the invention is not patentable, the
applicant, with the lawyer's assistance, may appeal the decision
to the USPTO's Board of Appeals. If the Board's decision is
unfavorable, a further appeal may be taken by the patent attorneys
to the U.S. Court of Appeals for the Federal Circuit.
The patent attorneys may also
be called upon to file corresponding patent applications in
other countries, increasing the area of patent protection
the patent owner may enjoy if the invention is marketed worldwide.
Although the actual filing and prosecution of these foreign
applications are usually handled by foreign firms, the U.S.
patent attorneys must have some working knowledge of the various
patent laws and procedures in the major industrial nations
of the world in order to render sound advice to the client.
After the patent is issued, patent attorneys may investigate
and develop licensing opportunities for the patented product
or process. Patent attorneys draft and negotiate license agreements
that allow others to practice the invention, in exchange for
appropriate compensation to the patentee.
In addition to the various tasks
relating to the procurement and licensing of patents, patent
attorneys are frequently called upon to advise and represent
clients in related areas such as trade secret law, copyright
law and trademark law. Patent attorneys are also called upon
to secure permission for their clients to make use of intellectual
property owned by others.
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