A patent attorney is a special kind of lawyer that has the ability to handle matters before the U.S. Patent and Trademark Office (USPTO). There are two kinds of patent matters at the USPTO: patent prosecution and patent litigation.
What is a patent attorney?
Patent prosecution involves filing a patent application with the USPTO. Then, going back and forth with a patent examiner to get a patent to issue. This can involve everything from electing an invention in a restriction requirement, responding to an office action, requesting continued examination of an application or even raising the issue of patentability on appeal. Patent litigation involves enforcing that patent you just received or trying to prevent other people from enforcing their patents. This can happen at the USPTO or in federal court. At the USPTO this is commonly called post-grant review. Post-grant review proceedings are complicated and nuanced. For instance one proceeding only applies to covered business methods, another proceeding only applies to newly issued patents. A patent attorney or a patent agent can help you with patent prosecution. Any licensed attorney can help you with litigation in federal court. Only a patent attorney can assist you with litigation before the USPTO.
How to become a patent attorney?
Becoming a patent attorney involves taking a special test with the USPTO and passing it. Additionally, patent attorneys need to have an undergraduate degree in a technical field. Finally, patent attorneys must be attorneys that are admitted to the bar of a state in the United States.
This is not to say that patent attorneys are experts in all fields of law or even all fields of patent law. Like everyone else in the service industry, we specialize. There are personal injury attorneys in Connecticut, criminal attorneys in Virginia, DWI attorneys in New York, auto accident attorneys in Texas, and DUI attorneys in Arizona if you need those services.