Published Article: “Three Areas of Intellectual Property You Need to Understand”

Prior to my attendance and panel participation at the SUITS conference in August 2013, TMC published an interview they did with me titled “Three Areas of Intellectual Property You Need to Understand” — this article is available here: Much of what is published there has been covered in earlier posts on this blog, such as in “Clearance Search Review” and “Invention Disclosure Highlights and Considerations”.

However, there is also additional new perspective pertaining to the biggest misconception in terms of how companies can understand, enforce, and protect their patents and intellectual property. This largest misconception in terms of how companies can understand, enforce, and protect their intellectual property is one held by a large portion of companies’ R&D engineering communities – that is, that an inventor’s novel and non-obvious invention is obvious and one that would have been formulated by any other engineer in a similar situation. This misconception leads to many inventions never being considered for patent protection. The issue can at least partially be overcome by continual inventor training to educate engineers to recognize the features of designed products and services that indicate the desirability of protecting aspects of these designed products and services with patents. This training should include information about patents, their history and intent, patentability rules, and examples of patented solutions within the given company’s technology areas. In particular, patent examples often inspire an “aha moment” within engineers that lead them to become prolific inventors and patent protectors.

Patent Analyst Venn diagram

Below is a Venn diagram I created in order to highlight some of the various differences in skills, knowledge, background, personality, and common responsibilities between a patent analyst role and a few related professions such as patent attorney, engineer/scientist, and patent paralegal.  The diagram is neither scientific nor comprehensive, and some overlaps are likely skewed percentage-wise. Also, of course some folks have multiple roles/skills (e.g., a patent paralegal with an engineering degree) – but the diagram is nonetheless fairly representative.  The point of view is from a patent analyst perspective, though personally I perform tasks as both a patent analyst and a registered US patent agent.  Additionally, differences exist between corporate and law firm professionals and between employees at larger versus smaller entities.

Example differences and overlaps:

1. A patent analyst needs to have a solid mix of technical expertise and patent knowledge and should also have an up-to-date awareness of the market and vendors in one or more technology areas, and a patent analyst needs to be able to perform detailed investigations to determine mappings of patent claims to corresponding products/solutions such as through reverse-engineering, product utilization, and/or documentation review.

2. A patent analyst and a patent attorney both need to understand the fundamentals of patents, such as patenting requirements, relevant dates, claim scope and language.  Both may be required to perform patent-related searches such as patentability, freedom to operate, invalidity, state-of-the-art, etc., and may be asked to review the potential relevance of a patented claim on one or more target products/solutions.

3. A patent analyst, a patent attorney, and an engineer/scientist each needs to have a solid background and understanding of one or more technology areas.  A patent practitioner, such as a patent attorney or a patent agent, must possess sufficient scientific and technical training such as having earned a Bachelor’s degree in a recognized technical subject.

4. A patent analyst and an engineer/scientist must both have a solid understanding of one or more technology areas.

5. A patent analyst, a patent attorney, and a patent paralegal must each have a fundamental understanding of patents, such as patenting requirements and relevant dates, though a patent paralegal does not need to understand the intricacies of claim language, and a patent analyst does not need to know the details of interaction with a patent office.

6. An engineer/scientist usually also has responsibility to manage and/or design and/or develop a technical product or solution.

7. A patent attorney additionally has a law degree and has passed a territorial law bar exam along with a patent bar exam and can represent clients in court and with the USPTO, and a patent attorney can provide legal opinions (such as patent non-infringement or invalidity).  Note that in the US a patent agent has passed the USPTO patent bar exam and can represent clients for patent application prosecution work with the USPTO, but cannot provide any other legal representation or provide legal opinions.  A patent attorney (or patent agent) can draft, file, and prosecute patent applications.

8. A patent attorney and a patent paralegal must both have a sufficient understanding of the main bureaucratic aspects of patent prosecution with one or more patent offices.

9. A patent paralegal often has a more detailed knowledge of the finer details associated with interaction with patents offices than might a patent attorney, and a patent paralegal works under the supervision of a patent attorney to assist with preparing and filing necessary patent-related documents.  A patent paralegal often possesses detailed knowledge of docketing software used to track patent assets.

Patent Agent Limitations

In general, a registered US Patent Agent (not an attorney) can provide patent services on behalf of a client, where these services pertain to the preparation and prosecution of patent documents with the USPTO.  There are several activities that an agent cannot legally perform, and there are others that most agents are not qualified to do. Some of these activities outside the scope of a typical patent agent are listed below for reference (this list is not meant to be exhaustive).

  • Advising on:
    • freedom to operate/commercialize
    • salability
    • market potential
    • licensing
    • suing
    • infringement
  • Marketing
  • Litigating

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