Patent Attorneys in Arkansas Find Research is Key

by Robert Bell  on Monday, Nov. 1, 2010 12:00 am  

Patent Process

So what does a patent attorney do?

"Basically we prepare, file and prosecute applications with the United States Patent & Trademark Office," Pieper said.

But that isn't necessarily as simple as it might sound.

"A patent application is a complex document to draft," Dougherty said. "It's not a form. My practice includes trademark and copyright prosecution as well, and those are pretty easy. Those are sort of fill-in-the-blank things. But with patents, you start with a blank sheet of paper."

It helps to think about the patent process as a deal with the government, Dougherty said.

"They give you a monopoly, effectively: exclusive right for a certain period of time," he said. "But your part of that bargain is you've got to fully disclose the invention so that it's out there for everyone to use and to read and to improve upon. And you do that through the form of the patent application, so that document's got to be complete or you end up with a patent that's not going to be enforceable."

But before any of that gets under way, a good deal of research must take place.

"We have to figure out, first of all, what are you entitled to claim, based on what we know that's already out there - what patent attorneys call the prior art," Dougherty said.

"Then we have to try to draft the best claim we can to claim as much of that ground as possible within the limitations defined by the prior art. You don't want to go too far because then your claims won't be valid, but you want to get as far as you can in order to get the broadest possible patent. That's a lot of the art of what we do is dealing with how we draft claims and amend claims during the process."

Because they need a deep understanding of the process involved in a patented product, patent attorneys must sit for the patent bar exam, which is administered by the patent office at locations around the country, in addition to the state bar exam, to prove their technical mettle and be allowed to practice before the Patent & Trademark Office, Glasgow said.

Usually this calls for an undergraduate degree in one of the hard sciences. Glasgow, for instance, has an undergraduate degree in biology and a master's degree in physiology and biophysics. His specialty is biological, chemical and pharmaceutical patents.



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