G. E. Ehrlich (1995) Ltd. Rogovin-Tidhar Tower, 15 th  Floor 11 Menachem Begin Street, 52 521 Ramat Gan, Israel www.ipaten...
Paul Fenster May 5, 2011 What  Does  a  Patent Attorney Do?
Disclaimer <ul><li>This presentation is of a general nature. </li></ul><ul><li>It should not be considered to be legal adv...
Introduction-1 <ul><li>The objective of this talk is to give you some indication of what a patent attorney should be doing...
Introduction-2 <ul><li>Under this scenario- </li></ul><ul><ul><li>The inventor gives the attorney a write-up (or maybe jus...
The Function of Patents  and Patent Portfolio <ul><li>The function of patents and patent portfolios are to add value to th...
The Function of the  Patent Attorney-1 <ul><li>The function of the patent attorney is to add leverage to what the client i...
The Function of the  Patent Attorney-2 <ul><li>To do this correctly: </li></ul><ul><ul><li>The patent attorney has to unde...
Patents that carry out the Objectives  <ul><li>One measure of whether a patent or patent portfolio is useful, is how well ...
To Do it Right-1 <ul><li>Having understood what the inventor has done and the background (sometimes called “Prior Art”), t...
Fog of Uncertainty <ul><li>Patents are “future oriented” that is, they are directed toward future needs and future problem...
Constraints <ul><li>The level of development at the time the application is written. </li></ul><ul><li>The need to disclos...
The need to disclose  more than you would  really like to disclose <ul><li>Enablement </li></ul><ul><ul><li>A patent is a ...
Issues  <ul><li>The patent application has multiple readers who have to be impressed: The client, the Inventor, The Examin...
<ul><li>Nothing is what it seems. What appears to be a simple, technical, task turns out to be both complex and, in many c...
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What does a patent attorney do

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Transcript of "What does a patent attorney do"

  1. 1. G. E. Ehrlich (1995) Ltd. Rogovin-Tidhar Tower, 15 th Floor 11 Menachem Begin Street, 52 521 Ramat Gan, Israel www.ipatent.co.il
  2. 2. Paul Fenster May 5, 2011 What Does a Patent Attorney Do?
  3. 3. Disclaimer <ul><li>This presentation is of a general nature. </li></ul><ul><li>It should not be considered to be legal advice and should not be relied upon in any particular instance, without consultation with counsel. </li></ul>
  4. 4. Introduction-1 <ul><li>The objective of this talk is to give you some indication of what a patent attorney should be doing and what he or she should be doing for you, </li></ul><ul><li>When they go to a patent attorney with an idea that want to protect, many inventors think that all a Patent Attorney should be doing is a bit of technical writing and cleaning up of the information that the inventor gives the attorney. </li></ul><ul><li>Unfortunately, many Patent Attorneys feel the same way. </li></ul>What Does a Patent Attorney Do?
  5. 5. Introduction-2 <ul><li>Under this scenario- </li></ul><ul><ul><li>The inventor gives the attorney a write-up (or maybe just explains the invention) </li></ul></ul><ul><ul><li>The attorney either edits or writes up what the inventor gave him (perhaps without really understanding it) </li></ul></ul><ul><ul><li>The attorney adds some claims, which he gives to the inventor, who may or may not understand them </li></ul></ul><ul><ul><li>Done. Sounds easy. </li></ul></ul>What Does a Patent Attorney Do?
  6. 6. The Function of Patents and Patent Portfolio <ul><li>The function of patents and patent portfolios are to add value to the client’s business. </li></ul><ul><li>Value can be added in a number of ways: </li></ul><ul><ul><li>Providing protection for the market in which the client operates. </li></ul></ul><ul><ul><li>Opening new markets for the client. </li></ul></ul><ul><ul><li>Protecting the client from patent infringement threats. </li></ul></ul><ul><ul><li>Enabling the client to raise money, go public or exit. </li></ul></ul>What Does a Patent Attorney Do?
  7. 7. The Function of the Patent Attorney-1 <ul><li>The function of the patent attorney is to add leverage to what the client is doing using patents and thus to add value to the client’s business. </li></ul><ul><li>To advise the client as to what additional information (perhaps additional R&D) might add value. </li></ul><ul><li>Adding value stands at the center of the process of which the patent attorney is a part. </li></ul>What Does a Patent Attorney Do?
  8. 8. The Function of the Patent Attorney-2 <ul><li>To do this correctly: </li></ul><ul><ul><li>The patent attorney has to understand the client’s business and how the invention fits into that business. </li></ul></ul><ul><ul><li>The patent attorney has to understand the technologies involved. </li></ul></ul><ul><ul><li>The patent attorney has to understand what the competition does and how the competition might react in the presence of the inventive competing product. </li></ul></ul>What Does a Patent Attorney Do?
  9. 9. Patents that carry out the Objectives <ul><li>One measure of whether a patent or patent portfolio is useful, is how well it carries out the objectives. </li></ul><ul><li>In order to carry out the objectives a patent has to be scary. </li></ul><ul><li>The Patent has to scare: </li></ul><ul><ul><li>Potential infringers </li></ul></ul><ul><ul><li>Potential competitors </li></ul></ul><ul><ul><li>Others with patents you may be infringing </li></ul></ul><ul><li>The Patent has to be: </li></ul><ul><ul><li>Narrow enough so that it is valid. </li></ul></ul><ul><ul><li>Broad enough so that it is infringed. </li></ul></ul>What Does a Patent Attorney Do?
  10. 10. To Do it Right-1 <ul><li>Having understood what the inventor has done and the background (sometimes called “Prior Art”), the Attorney has to decide what is that is new and non-obvious in what the inventor has described. </li></ul><ul><li>Then the patent attorney has to both generalize (one more than one level) and understand the full scope of the inventive concept. </li></ul><ul><li>BUT, an important problem with this is that patents applications are written in a fog of uncertainty. </li></ul>What Does a Patent Attorney Do?
  11. 11. Fog of Uncertainty <ul><li>Patents are “future oriented” that is, they are directed toward future needs and future problems. </li></ul><ul><li>The scope of what is inventive is limited by the prior art (what was done before your invention). You only discover what this is long after you write the patent application, </li></ul><ul><li>The field is always changing, both at your client and at the competitors. </li></ul><ul><li>Ideas arise which compete (both yours and the competitors. </li></ul><ul><li>The Law is continuously developing. </li></ul>What Does a Patent Attorney Do?
  12. 12. Constraints <ul><li>The level of development at the time the application is written. </li></ul><ul><li>The need to disclose more than you would really like to disclose. </li></ul><ul><li>The rate of inventions by the client. </li></ul><ul><li>Money </li></ul><ul><ul><li>Limits the number of patent applications and patents. </li></ul></ul><ul><ul><li>Limits the countries in which the application is filed. </li></ul></ul><ul><ul><li>Limits the time they can be maintained. </li></ul></ul><ul><ul><li>Limits the ability to assert the patents. </li></ul></ul>What Does a Patent Attorney Do?
  13. 13. The need to disclose more than you would really like to disclose <ul><li>Enablement </li></ul><ul><ul><li>A patent is a “contract” between the inventor and the government. </li></ul></ul><ul><ul><li>You disclose before you can be sure what, if any, protection you will get. </li></ul></ul><ul><li>Best Mode </li></ul><ul><li>You need to disclose ideas that are not completely developed. </li></ul><ul><li>Your disclosure almost always gives others ideas which they can use. </li></ul><ul><li>Trade secrets almost always have to be disclosed in some way. </li></ul>What Does a Patent Attorney Do?
  14. 14. Issues <ul><li>The patent application has multiple readers who have to be impressed: The client, the Inventor, The Examiner, Investors, Infringers, the Judge, the Jury. Clarity is essential. </li></ul><ul><li>All of this while trying to minimize damage caused by the disclosure, balanced by deriving maximum utility. </li></ul><ul><li>The need to protect against competition (rather than protect the product). </li></ul><ul><li>The patent will probably be part of a portfolio and you need to imagine what that will be like. </li></ul>What Does a Patent Attorney Do?
  15. 15. <ul><li>Nothing is what it seems. What appears to be a simple, technical, task turns out to be both complex and, in many cases, essential to meeting the client’s goals </li></ul><ul><li>Many company pay a lot of money for patent protection and advice, only to discover that, in the end, they have little useful protection </li></ul><ul><li>As with many functions in the corporate environment, defining the company’s goals clearly and then planning to meet them is imperative </li></ul><ul><li>If this is not what you are doing, you may be wasting a lot of money, not to mention damaging your company’ future </li></ul>What Does a Patent Attorney Do?

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