General Practice, Solo & Small Firm DivisionMagazine

Volume 17, Number 3
April/May 2000

When Should I Refer to a Patent Attorney?

We all know that it is an ongoing and difficult task to keep up with the latest developments in the law. That is particularly so in areas of practice where we have limited real-world opportunities to expand our understanding. In the intellectual property field, and the patent area specifically, the general practitioner may not fully appreciate a client's legal needs. For that reason, conferring with, or referral of a client to, a patent attorney should be considered when the client describes a great new idea that has never been on the market, or a once-in-a-lifetime opportunity to invest in the widget that everyone will want to purchase.

A patent attorney is required to have a specific technical background and to pass a Patent Office examination before being admitted to represent inventors in the prosecution of patent applications. Through an understanding of technical matters and the legal requirements associated with patent rights, the patent attorney can provide the following capabilities that the general practitioner may find of use.

  1. Provide advice regarding the patentability of an invention.
  2. Represent clients before the Patent Office to obtain patent protection for inventions.
  3. Provide patent-infringement and patent-validity opinions.
  4. Undertake due diligence tasks related to identifying intellectual property.
  5. Negotiate and prepare technology-licensing agreements.
  6. Assist clients generally in identifying their intellectual property.
  7. Represent or assist clients in patent-infringement litigation matters.

The general practitioner should consider referring technology-based matters to a patent attorney. In particular, only an attorney registered with the Patent Office is permitted to represent an invention owner in the processing of a patent application.

The nonregistered attorney must refer the prosecution of a patent application to a patent attorney.

In addition, the general practitioner should refer a technology-based matter to a patent attorney when the practitioner is uncomfortable discussing the technology underlying a particular product/service of importance to a client. A referral to a patent attorney should be made whenever the practitioner believes that the matter touches upon U.S. and foreign patent laws and the practitioner is uncomfortable discussing the impact of such laws. Such matters may include key patent-protection filing deadlines in the United States and other countries and the variations in patent laws and invention-ownership requirements from one country to another.

The general practitioner should consider referring the review, negotiation, and preparation of technology-based licensing agreements, as well as due diligence matters dependent upon patent-protected processes and products. Finally, the general practitioner should consider referring patent litigation matters to a patent attorney.

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