Patent Law - ABA YLD 101 Practice Series

By Matthew Asbell

The practice of patent law involves efforts to acquire, enforce, keep, share, and where improperly granted, destroy patents in inventions. Patents give exclusive rights for a limited time to make, use, sell, offer for sale, and import products and processes embodying an invention. They are granted by national governments to inventors or their assignees in exchange for disclosure of the underlying technology sufficient to enable others of similar skill to make or practice the invention. In the United States, to be patentable, the invention must be new, useful and not obvious.

Patents are territorial in nature and the precise rules differ from country to country. However, a number of treaties facilitate the filing and examination of patent applications in multiple countries.

In the United States, those who help inventors acquire or "prosecute" patents are patent agents or patent attorneys. A patent agent is a scientist or engineer who is not a lawyer, but has qualified to submit patent applications to the United States Patent and Trademark Office (USPTO) by passing an exam commonly known as "the patent bar." A patent attorney has the same qualifications as a patent agent, but is also a lawyer. Aside from prosecution, patent law also includes litigation to enforce, keep, or destroy patent rights. Patent litigators need not be registered to practice before the USPTO, but a science background is considered helpful. Additionally, certain transactional attorneys practice aspects of patent law when drafting agreements to license or sell patented technologies.

An invention should be kept secret prior to filing a patent application. Publication or sale of the invention more than a year prior to filing can preclude the grant of a patent in the United States. Many other countries are tougher. Any type of disclosure before filing an application may destroy the inventor's right to secure protection in, for example, Europe or Japan. However, inventors may reserve their rights to file a complete application for a one year period by filing a "provisional" application with the USPTO. A provisional patent application consists of a written description disclosing the invention and any figures or drawings. A complete or "non-provisional" application additionally includes claims.

The written description must enable a "person having ordinary skill in the art" (PHOSITA) to practice the invention, show that the inventor(s) had possession of the inventive concept at the time of filing, and provide the best known mode for practicing the invention. The inventor(s) need not make or perform the invention in actuality as long as the description is sufficiently enabling. The invention must be new and not merely an obvious variation or combination of previously known technologies.

A claim consists of a single sentence which defines the scope of the invention. Since the words used in a claim are subject to interpretation often during subsequent litigation, the drafting of claims is a specialized skill employed primarily by experienced patent attorneys.

Up until 18 months after filing, when an application is published by the USPTO, the inventor(s) can withdraw their application and elect to instead protect it as a trade secret.

Inventors or other persons interested in acquiring patent rights should seek the advice of a patent attorney with a background in the same field as the invention. Attorneys interested in the practice of patent law should consider as first steps whether they are qualified to take the patent bar by reviewing the information on the USPTO website at www.uspto.gov and possibly also join the ABA Section of Intellectual Property Law at www.abanet.org/intelprop/home.html and other organizations providing educational and networking opportunities in the field of patent law.

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About the Author

Matthew D. Asbell, Esq. is an associate with the international intellectual property law firm of Ladas & Parry LLP, a registered patent attorney, and a member of the New York and New Jersey bars. Mr. Asbell obtained his J.D. from the Benjamin N. Cardozo School of Law where he served as president of the school's Intellectual Property Law Society, as chair of the Young Lawyers Committee of the New York State Bar Association's Intellectual Property Law Section, and as the Law Student Division liaison to the ABA Section of Intellectual Property Law.

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