A couple of people have asked me what does a Patent Attorney do. So I've decided to create this entry.
Job description
A patent attorney deals with obtaining and enforcing intellectual property rights on behalf of inventors or organisations. Patents are granted by the government and give inventors the right to prevent the commercial use of inventions by other parties for a limited period. Most patent attorneys work either in private firms of patent attorneys or in large manufacturing organisations across many branches of industry.
Patent attorneys (also known as patent agents) assess whether inventions are really new and innovative and therefore eligible to be patented. They draft and carry through applications to secure patents and act to enforce inventors' rights if patents are infringed.
Typical work activities
The nature of the work depends on whether the attorney is advising private clients or is employed by a large organisation to protect their products but, broadly speaking, activities include:
- discussing inventions and processes with inventors or manufacturers and ascertaining whether they are likely to succeed in being granted patents;
- studying and analysing scientific or technical documents, including previously published patent documents, to assess in what ways an invention is new and innovative;
- advising on chances of success and likely legal costs;
- writing detailed descriptions of inventions in precise legal terms (patent drafts), which will form the basis for patents to be granted by patent offices in various parts of the world;
- suggesting modifications or extensions to the definition of the invention to make a claim for monopoly as broad as possible;
- prosecuting patent applications by corresponding with The UK Intellectual Property Office and the European Patent Office (EPO), often presenting complicated technical arguments;
- preparing responses to reports from patent examiners;
- ensuring application and renewal deadlines are observed;
- working with solicitors and barristers to defend or enforce UK patents;
- conducting litigation in proceedings at the EPO or in the Patents County Court;
- providing updates on the application process;
- advising overseas agents on applications for foreign patent applications;
- advising on the infringement and enforcement of patent rights;
- mounting challenges to perceived infringements;
- advising on whether business activities will infringe someone else's patent rights;
- dealing with patent licence negotiations;
- dealing with assignments of patent when a patent is sold or transferred;
- keeping up to date with legal developments in the intellectual property field;
- advising on other intellectual property rights, e.g. designs or trade marks;
- tutoring and mentoring trainee patent agents;
- in private practice, contributing to the overall running of the firm.
(taken from http://www.prospects.ac.uk/)
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