What Does a Patent Attorney Do?

A patent is a legal document that describes an invention. But more than that, it’s a special type of document that gives the patent owner certain rights: the right to be the only one allowed to make, sell, or use the invention described in the patent. You can kind of think of a patent as a contract between an inventor and the government. The government says, “If you tell me how to make this great new invention you’ve discovered, and explain it in full detail in a document, I’ll give you the right to be the only one that can make, use or sell the invention for 17 years. No else will be able to do these things with your invention unless they have your permission.” Sounds like a good deal, eh?

It’s because of patents, for example, that iPods can’t just be taken apart, copied and made by whomever and sold to compete with Apple. Well, partially because of patents. To get a more complete understanding, to truly understand why Microsoft had to design the Zune instead of just make iPods, you have to know the full “intellectual property” world.

The Big Picture: Intellectual Property

These terms, such as patents and intellectual property, are often familiar to most people but not fully understood. Let’s draw the big outer circle first and work our way inward. Intellectual property is, just as the name implies, a type of property. You have your shoes, that’s property, your PS3, that’s property, your house, property and you have that story that you wrote in 5th grade about the monster tree that came alive and pulled apart all the dogs in the neighborhood. You were one sick puppy. No pun intended. But yes, that weird story is also your property – your intellectual property.

There are generally four types of intellectual property: patents, copyrights, trademarks, and trade secrets. Your 5th grade story falls under the “copyright” category. Basically, any story, book, song, article, etc., just about anything that you write down or record is protected by copyright. But we’re not going to get into the other types of intellectual property too much here, after all, this article is about patents.

How does one get a patent and where does the attorney come in?

I lied. Just to make sure you understand, we’ll talk about copyrights just a bit more for comparison sake. A copyright is granted the moment you write the piece of work down on paper. Did you write it down? That’s it, you own a copyrighted work. A patent, however, goes through a much more complicated process. So complicated, in fact, that no ordinary attorney can do it for you. Broadly speaking, to get a patent you must prove that your idea is new, and that your idea is useful. Who do you need to prove this to? Why, the United States Patent and Trademark Office (USPTO), of course.

So unlike a copyright, which is granted just upon recordation, a patent must be applied for by filing a patent application with the USPTO.  Let me tell you something about the USPTO. It’s a government agency, like the U.S. Postal Service (USPS), the Federal Trade Commission (FTC), Securities and Exchange Commission (SEC), and dozens of others. But did you know that other than the USPS, the people who deliver our mail, the USPTO receives the largest volume of mail per year out of all government agencies? There are over 7,000 employees working at the USPTO trying to review all of those patent applications coming in every day, but they are terribly behind. To the point where it could take anywhere from 2-5 years before your patent application gets granted – if it ever gets granted at all! Big difference from granted upon conception, eh?

So you can imagine, with all this backlog and all this mail, the USPTO has a strong interested in filtering the incoming communication and limiting it to those who know the law of patents as much as possible. This is why only attorneys that pass a special test can file papers with the USPTO. All attorneys must pass a test called the bar exam in order to work as and call themselves attorneys, but if they want to work with inventors and file patent applications with the USPTO, they must also pass the patent bar exam.  And not all attorneys can take the patent bar exam, only those that have a degree in a technical field that the USPTO believes will qualify them to understand patentable technology.

Ok, So the USPTO is Busy and the Patent Attorney Must Jump Through Some Hoops… What About Day to Day Work?

A patent attorney generally does one of two things: patent prosecution or patent litigation. Patent prosecution refers to writing a patent application and arguing back and forth in a long song and dance with the USPTO over those 2-5 years to convince the USPTO to grant the patent. Patent litigation refers to filing lawsuits in courts to enforce the patent rights for the patent owner. Remember at the beginning we said that a patent owner has the right to be the only one allowed to make, use or sell the invention? If anyone does one of these three things without the patent owner’s permission, the patent owner can sue them and get paid in a number of ways.

These are the two major tasks of patent attorneys, prosecution and litigation, getting the patents and enforcing them. Each one is complicated in itself, so often times a patent attorney will focus on one or the other. If the attorney focuses on patent prosecution, the attorney may have hundreds of clients and be managing hundreds of patent applications that are slowly being examined by the USTPO. Day to day, the attorney will have various due dates arriving in various cases. He or she may need to respond to the USTPO in this case today, have another response due next week for another case so time must be set aside for that, etc.

If the attorney focuses on litigation, the attorney will most often work on one case at a time, depending on how large the case is. Sometimes, the attorney will work with a team of attorneys on a single case for months, studying the patent at the center of the lawsuit and studying the law to prepare the best arguments for their client.

Ok, I got it now. So how much do patent attorneys make?

Ah, it’s not about the money, right? Right? You seem to be nodding your head and saying yes it is. Well, it is a niche field of law, and since it requires a few special extras like the technical degree and the patent bar, it can be pretty lucrative. But like any job, the real ideal is to do something you enjoy that pays enough, and if you enjoy reading about new inventions and enjoy arguing, seriously consider putting in the time to become a patent attorney. I’m sure you’ll find it pays enough!