Patent Litigation vs. Patent Prosecution
Patent prosecution involves developing and executing strategies for protecting a client’s innovations through the issuance of a patent. The prosecution attorney coordinates with inventors to understand the novel aspects of their invention to prepare and file an application with the USPTO. They then argue to the patent examiner that the invention described meets the criteria for patent protection.
Before obtaining a patent, the prosecution attorney and assigned USPTO patent examiner go through several exchanges to establish patent eligibility. Usually, this involves refining the scope of the claimed patent until the examiner is satisfied that the invention is patentable. Prosecution attorneys often enjoy the technical challenges of drafting patent applications. Also, because prosecution matters are typically more discrete and less time-sensitive than adversarial proceedings, prosecution often entails more individual work and less frequent collaboration with other attorneys.
While patent prosecutors focus on obtaining patents, patent litigators spend their time litigating issues relating to already-issued patents. For example, a patent litigator defending an infringement case might argue that either the patent is invalid or that the patent is not infringed. Litigators develop strategies based on reviewing expert reports, communicating with witnesses, and conducting discovery of relevant documents. They often enjoy the exciting pace of preparing for trial and the variety of work, from conducting depositions to managing experts, witnesses, and teams of attorneys. But a litigator’s practice usually requires working around inflexible court deadlines and case emergencies, leading to a less predictable schedule and greater emphasis on working in teams.
Qualifications for Patent Prosecution vs. Patent Litigation
One key difference between these two career paths is that, whereas patent litigators practice in federal courts, patent prosecutors practice exclusively before the USPTO. As such, litigators must be licensed attorneys, but there’s no requirement that they have a technical background (though, as a practical matter, they generally do). By contrast, prosecution attorneys must have a technical background, such as a degree in science or engineering, or qualify for an exception to sit for the USPTO’s admission exam, known colloquially as the “patent bar.” Although attorneys often choose to practice either patent prosecution or patent litigation, attorneys who have passed the patent bar can opt to do both.
Practicing in USPTO vs. Federal Court
There are important differences between practicing law before a federal district court versus the USPTO. USPTO trials are conducted in front of three Patent Trial and Appeal Board (PTAB) Article I administrative judges. In contrast, district court patent litigation will occur before a single Article III judge or even a jury. Discovery is far more limited in PTAB proceedings than in federal court litigation, and PTAB proceedings are faster than traditional litigation. PTAB trials typically conclude within a year, while patent litigation in federal court can stretch out for many years.
There’s also a key geographical distinction between these two areas: The USPTO is located in Alexandria, Virginia. Although most patent prosecution and USPTO interactions happen remotely via phone and video conferences, PTAB trials occur only in Alexandria. Patent litigation, by contrast, can occur in any federal district court in the country.
Those considering a patent law career should consider whether they’re interested in pursuing patent prosecution, patent litigation, or both. No matter which path one chooses, patent law offers engaging opportunities to represent inventors on the cutting edge of technology.
