By Bernadette Starzee
The Daily Record Newswire
Patent law is a very specialized category within the intellectual property arena, one with constant updates and unique nuances. Companies must take care to choose a patent attorney with expertise in their industry and experience in the type of matter for which they require assistance.
Generally speaking, an individual or business can apply — through the U.S. Patent and Trademark Office — for a patent for any new or useful machine, process, article of manufacture or composition of matter, or an improvement to an existing technology. The invention must be novel, nonobvious and adequately described. A patent will not be granted for abstract ideas, laws of nature, physical phenomena or inventions that are not useful or are deemed offensive to public morality. Further, literary, dramatic, musical or artistic works are not eligible for patents, but copyrights.
Patent attorneys, as well as patent agents — who do not have a law degree — who are registered with the patent office can help individuals and companies submit a patent application.
Patent attorneys can provide additional services that patent agents cannot, such as representing the individual or company in a patent infringement lawsuit. The patent office maintains a listing of registered attorneys and agents on its website (www.uspto.gov).
Better than getting an attorney’s name off a website listing, however, is receiving a personal referral from someone who deals with intellectual property lawyers. A general practice lawyer or a colleague from your trade association may be able to point you toward an effective patent attorney.
But keep in mind that a patent attorney that is good for one company or product may not be the right fit for yours. To assist clients in drafting a patent application, patent attorneys need to have a keen understanding of the subject matter. Patent attorneys typically have an undergraduate degree in a scientific or technical discipline in addition to their law degree, and concentrate their practice within their area or areas of expertise, such as the biotechnology, computer science, chemistry or mechanical fields. Within these broad categories, there are many specific areas of focus.
Because the lawyer’s understanding of the subject matter is crucial to successfully drafting the patent application, it’s important to choose a patent attorney with expertise and experience in your industry. Law firm websites typically detail the areas of focus and credentials of their attorneys; when you meet with the attorney, inquire about whether he or she has handled patent applications for products or processes that are similar to yours.
If you are seeking international patent protection for your invention — or if you think international protection may be necessary in the future — seek out an attorney with expertise or a network of contacts in global markets.
Once your application is approved, an attorney can further assist you in helping maximize the commercial potential of the patent.
Your lawyer can also guide you in taking measures to protect your patent from infringement. Patent attorneys can send cease-and-desist letters and, if necessary, bring a lawsuit against violators on your behalf. A good attorney can also guide you in avoiding infringing on other inventors’ patents — which could cost you a bundle in the event you are served with a cease-and-desist order or a lawsuit.
As many individuals and businesses are unaware that they are in possession of a patentable or patented product or service, an attorney’s advice can be invaluable.
Before searching for a patent attorney, educate yourself on the topic. The patent office’s website contains a treasure trove of useful information.
