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Intellectual Property: Patent Law

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Transactional
Intellectual Property
Patent Law

Patents protect the intellectual property interest of a company or person who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

Lawyers work with patents in a number of ways. Some specialize in preparing patent applications and obtaining patents from the U.S. Patent and Trademark Office (PTO) (“patent prosecution”). Patent prosecution attorneys must have some scientific or technical training, such as an undergraduate degree in engineering or biological or physical science, and must pass the patent bar examination administered by the PTO (in addition to a state bar exam).

When a client develops a new, commercially important invention or process, the patent prosecution attorney assists in evaluating its patentability and in responding to PTO questions and objections. The attorney has to have a [...]

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Patents protect the intellectual property interest of a company or person who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

Lawyers work with patents in a number of ways. Some specialize in preparing patent applications and obtaining patents from the U.S. Patent and Trademark Office (PTO) (“patent prosecution”). Patent prosecution attorneys must have some scientific or technical training, such as an undergraduate degree in engineering or biological or physical science, and must pass the patent bar examination administered by the PTO (in addition to a state bar exam).

When a client develops a new, commercially important invention or process, the patent prosecution attorney assists in evaluating its patentability and in responding to PTO questions and objections. The attorney has to have a deep enough understanding of the underlying technology or science and what is "new and non-obvious" about the discovery to shepherd the application through the PTO process.

Patent litigators, who are not necessarily trained in the underlying technology or science, litigate disputes between and among inventors and business entities involving patent rights.

Patent lawyers may also be transactional attorneys if their practice involves negotiating and drafting agreements concerning the use or transfer of technology. A basic grounding in business law is useful for any IP attorney, but is particularly important for those who are interested in the IP aspects of corporate and commercial transactions.

Many lawyers who are not patent law experts will need to know something about patent law, too. For instance, lawyers working for entrepreneurs and technology companies, or those preparing initial public offerings for technology companies, should have a basic understanding of patent law.

 
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