Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008...

Patent Law A Career Choice For Engineers

Patent Law A Career Choice For Engineers

Azadeh Khadem

Registered Patent Attorney

November 25, 2008

Azadeh Khadem

Registered Patent Attorney

November 25, 2008

© 2008 Knobbe Martens Olson & Bear LLP2

Patent Law As A Career

Learn about exciting new technologies before everybody else

Work with and learn about a variety of technologies and companies

Work directly with high level management

• Opportunities for management positions

Higher salaries

Possibly longer work hours


Definitions

Intellectual property (IP)

A field of law relating to legal protections for creations of the mind:

• Artistic works such as musical compositions, photographs, poems, etc. - protected by copyrights

• Symbols and names used in commerce – protected by trademarks

• Inventions – protected by patents


Definitions

Patent - a legal instrument giving exclusive rights to the owner for use and practice of an invention claimed in the patent

Patent law - a legal field that deals primarily with laws and regulations regarding acquiring patents and enforcing them


Patent Law

Governed by federal law in the United States

Different countries have their own rules and regulations

International treaties cover multinational patent applications


Patent Law

Distinct fields of practice:

• Patent prosecution – deals primarily with obtaining a patent

• Patent litigation – deals primarily with enforcing a patent

• In-house attorney – deals with a combination of both prosecution and litigation


Patent Prosecution

Patent prosecution includes areas of patent law that deal primarily with obtaining patents

A patent attorney who practices patent prosecution is involved in all aspects of acquiring and maintaining patents

Most interactions are with the United States Patent and Trademark Office (USPTO) and inventors


Getting A Patent

Conducting discussions with an inventor about his/ her invention

Writing a patent application based on information received from the inventor and knowledge of the law

Putting application in correct format for submission

Preparing additional required paperwork

Submitting application to USPTO


United States Patent and Trademark Office

Government agency located in Washington, DC

Responsible for

• Receiving patent applications

• Assigning patent applications to a person for examining

• Determining whether or not a patent can be granted


Patent Office Procedure

Correspond with patent office regarding patent application and patentability of its subject matter

Make changes to application claims

Review application and prepare for issuance, once application is allowed


Patent Prosecution

Patentability studies

• Conducting research and analysis and determining whether an invention is patentable

Infringement studies

• Conducting research and analysis and determining whether a product or method infringes a patent


Patent Prosecution

Developing Strategies

• Intellectual property is one of the most central and primary assets of companies

• It is very important to get the best protection for any given intellectual property

• When there are financial limitations, companies have to decide which inventions to pursue and determine how to get the best protection from the numbers of patents they can pursue

• Because of importance of IP, patent attorneys may be in direct contact with high level management


Patent Litigation

Patent litigation refers to areas of patent law that deal primarily with enforcement of patents

• After you have obtained a patent, you can confront competitors that are using or making the same technology as the one you have patented


Patent Litigation

Various steps:

• Infringement study

• Cease and desist letter

• Starting a lawsuit by filing a complaint

• Writing documents and papers for the court and to the other side

• Discovery – producing and obtaining documents relevant to the subject of lawsuit

• Depositions – questioning a witness under oath


Patent Litigation

• In front of a judge or jury:

• Hearings at the court where one aspect of the case is presented to a judge

• Settlement conferences

• Mediators facilitate settlement discussions

• Trial

• Rare in patent cases


Patent Litigation

Direct contact with high level management regarding issues such as:

• Risks involved in litigation

• Patent owner – Patent could be declared invalid

• Patent infringer – May be forced to pay for infringement damages, and may also be prevented from producing and selling the infringing products

• Costs associated with litigation


In-House Counsel

Work directly for a company

Manage a patent portfolio

Decide what inventions are worthy of patent protection

Create IP strategy

Work with and manage outside counsel


The Path To Becoming A Patent Attorney

By being here, you have taken the first step towards becoming a patent attorney

Engineering or science background required

LSAT (Law School Admission Test)

Good GPA

Resume



Two different paths:

• Starting law school right after college – May save you some time

• Working a few years – May help you gain work experience and engineering expertise



Law school:

• Three years - involves a lot of reading and analyzing

• Grades/class rankings are very important in job placement

• However, because only students with engineering or science backgrounds can enter patent law, there is less competition in patent law than other areas

Azadeh Khadem

Azadeh Khadem

Knobbe Martens Olson & Bear LLPKnobbe Martens Olson & Bear LLP

kmob.comkmob.com

Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008...

Documents

Transcript of Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008...