What is a Patent?
According to the United States Trademark and Patent Office (commonly referred to as the USPTO), a patent gives an inventor the right to “exclude others from making, using, offering for sale, or selling an invention or importing it into the United States. A plant patent gives you additional rights on the parts of plants (e.g., a plant patent on an apple variety would include rights on the apples from the plant variety). What is granted is not the right to make, use, offer for sale, sell or import the invention, but the right to stop others from doing so. If someone infringes on your patent, you may initiate legal action.” Patent law is statutorily governed by Chapter 35 of the United States Code.
Introduction
Patent prosecution and patent litigation represent two distinct career paths within patent law. Patent prosecutors work closely with inventors and companies to secure patent rights. Their daily activities involve drafting detailed patent applications, responding to office actions from patent examiners, and strategizing to obtain the broadest possible patent protection for their clients’ inventions. Patent prosecutors often find themselves deeply immersed in cutting-edge technologies, constantly learning about new inventions across various fields. On the other hand, patent litigators focus on enforcing and defending patent rights in court. Their daily work involves analyzing patents, researching prior art, drafting legal briefs, and presenting arguments in court. Patent litigators often work in high-pressure environments, managing large-scale discovery processes and preparing for high-stakes trials.
A Day in the Life
The daily life in practice for patent prosecution and patent litigation attorneys differs significantly, reflecting the unique nature of each specialization within intellectual property law. Patent prosecution involves working directly with inventors and the USPTO to secure patent rights for new inventions. Patent prosecutors must pass the USPTO registration examination, commonly known as the patent bar. This exam requires a background in science or engineering, making patent law one of the few legal specialties where a technical degree is often necessary.
There are several key differences between these two areas of practice. The nature of work in prosecution is an administrative process with the USPTO, while litigation is a judicial process in courts. Prosecution requires strong technical and scientific writing skill and an understanding of patent law, while litigation demands excellent oral advocacy and broader legal knowledge. Client interaction in prosecution involves working closely with inventors and companies, while litigation often deals with opposing parties and their legal teams.
Both areas of practice offer rewarding careers for those interested in the intersection of law and technology. The choice between prosecution and litigation often depends on an individual’s skills, interests, and desired work-life balance. Ultimately, both specializations play crucial roles in the protection and enforcement of intellectual property rights, contributing to innovation and technological advancement.
Patent Prosecutors
A typical day for a patent prosecution attorney includes drafting and filing patent applications, responding to office actions from USPTO examiners, negotiating with examiners to address concerns or objections, conducting prior art searches, and advising clients on patent strategy and portfolio management. One of their core responsibilities is drafting and filing patent applications, which involves translating complex technical inventions into clear, legally sound documents. This process requires collaborating with inventors to understand the nuances of their innovation, writing detailed descriptions of the invention, crafting precise claims that define the scope of protection sought, and ensuring all formal requirements for filing are met.
Responding to office actions from USPTO examiners is another crucial aspect of their work. When the USPTO examiners review a patent application, they often issue office actions that require a response. This involves carefully analyzing the examiner’s rejections and objections, researching relevant prior art and legal precedents, drafting persuasive arguments to overcome rejections, amending claims when necessary, and ensuring responses are filed within specified deadlines. Often, direct communication with patent examiners is necessary to resolve issues, which may include conducting examiner interviews, presenting oral arguments to clarify the invention’s novelty and non-obviousness, and finding common ground to move the application towards allowance.
To assess patentability and respond to office actions effectively, attorneys must conduct prior art searches. This involves using various databases and search tools to find relevant prior art, analyzing scientific papers, existing patents, and other technical literature, evaluating the relevance of found prior art to the claimed invention, and determining strategies to differentiate the invention from existing technology. Patent prosecutors also serve as strategic advisors, assessing the strength and commercial potential of inventions, recommending which innovations to patent and in which jurisdictions, developing strategies for building a cohesive patent portfolio, advising on potential infringement issues or freedom-to-operate concerns, and keeping clients informed about changes in patent law that may affect their interests.
Patent prosecutors also play a significant role in Inter Partes Review (IPR) proceedings and representation before the Patent Trial and Appeal Board (PTAB). This involvement extends their expertise beyond traditional patent prosecution tasks, requiring them to navigate complex administrative trial proceedings. IPR is an administrative trial proceeding conducted by the PTAB to review the patentability of one or more claims in an issued patent. Patent prosecutors involved in IPR proceedings may draft and file IPR petitions, respond to IPR petitions, conduct prior art searches, prepare expert declarations, engage in motion practice, and participate in oral hearings. The PTAB is the administrative law body within the USPTO that decides issues of patentability after patent prosecution has ended. Patent prosecutors will “appeal” their patent rejection to the PTAB. Patent prosecutors representing clients before the PTAB must navigate complex procedural rules, understand PTAB precedent, coordinate with litigation strategy, and manage discovery. The rise of IPR and PTAB proceedings has significantly impacted patent prosecution practice, affecting drafting strategies, client counseling, and the need for continued education.
This area of practice is generally less adversarial and more predictable in terms of workload and timelines compared to litigation as patent prosecution follows a structured process within the USPTO and must adhere to defined deadlines.
Patent Litigators
In contrast to patent prosecution, patent litigation involves resolving disputes over patent infringement in federal courts. The daily life of a patent litigator is characterized by a diverse and often intense set of activities. Patent litigators spend significant time preparing legal briefs and arguments, which involves in-depth analysis of patent claims, prior art, and relevant case law. They must craft compelling narratives that explain complex technical concepts in a way that judges and juries can understand.
A substantial portion of a patent litigator’s time is devoted to conducting discovery. This includes reviewing and analyzing technical documents, preparing and responding to interrogatories and requests for production, taking and defending depositions of fact and expert witnesses, and working with technical experts to understand the intricacies of the patented technology and potential infringement. Patent litigators work closely with expert witnesses to develop technical arguments and prepare expert reports. This collaboration is crucial for explaining complex technologies to the court and challenging opposing experts’ opinions.
Markman hearings, also known as claim construction hearings, are a critical part of patent litigation. These pretrial hearings are used to determine the meaning and scope of patent claims. The importance of Markman hearings stems from the fact that patent claims define the boundaries of patent protection and form the basis for determining both patent validity and infringement. Markman hearings typically occur before trial, often before the close of discovery or in relation to summary judgment motions. However, the timing can vary, as courts have discretion in when to hold these hearings. Some may occur during pre-discovery, at summary judgment, or even at trial before jury instructions. Markman hearings play a crucial role in patent litigation, often determining the direction and outcome of cases. They require careful preparation and presentation of arguments by patent attorneys, as the resulting claim constructions can have far-reaching implications for their clients’ patent rights.
This combination of technical complexity, legal intricacy, and high stakes makes patent litigation a challenging and often stressful field, requiring attorneys to constantly adapt and manage intense workloads, especially as case deadlines approach.
For more information, consider reaching out either to the following list of ASU Law professors in this practice area or check out the below list of secondary resources:
ASU Law Professors
Jon Kappes
Tyson Winarski
Secondary Resources