Working Effectively with your Firm’s Patent Attorneys


Working effectively with patent attorneys can both increase the number of patents you are awarded and improve their quality. An effective working relationship begins with understanding the basics of the patenting process and knowing when to alert your patent attorney that you may have developed an invention. Just as a major factor in a university faculty member’s career advancement is publishing research papers, the key to an industrial researcher’s advancement is developing profitable new intellectual property. Being the inventor on patents is a way to demonstrate your productivity.

Understanding the patent attorney’s mindset

Patent attorneys usually approach situations with a different mindset than researchers do even if they have an advanced degree in chemistry. While research managers and inventors tend to think about an invention’s interesting technical aspects, your patent attorney often is thinking about how your competitors will try to legally get around your patent and develop something very similar.  A better strategy for your firm may be to keep the knowledge a trade secret rather than patenting it.

The patent attorney, often asking pertinent questions, can help protect the firm’s interest by extending the scope of the invention. This can make it more difficult for others to legally circumvent your patent (when it issues). The lab work necessary to accomplish this and write pertinent claims often can be done in a more timely and cost-effective way early in a project than very late. By performing a timely “prior art” search, the patent attorney and the project team may be able to define potential competitors. You and the attorney can then monitor that particular firm’s patent activity and publications to determine if the firm is indeed working to develop similar technology.

The process of obtaining a patent does not end with the submission of a patent application. A patent examiner specializing in the technology area of the application will review it and issue an “office action” evaluating the validity of the application. Most patent applications are rejected in their first office action. Usually this office action will state what is described in the patent claims as “obvious to one skilled in the prior art.” While the patent attorney will consult with the inventor, the attorney usually takes the lead in rewriting claims and rebutting the patent examiner’s assertion that the proposed invention is obvious to specialists in the technology field of the application. After receiving a negative office action on one of my patent applications, attorney Richard Lemuth commented to me, “This is when I really earn my salary.” Repeated office actions may be needed to convince the examiner that the invention, or part of it, is valid resulting in the issuance of a U.S. patent.

Your own role in patenting

Understanding the basics of the patenting process aids researchers in defining the key features of the technology to be patented and how the new technology differs from previously known technology (the prior art). It helps them work more effectively with patent attorneys in preparing patent applications. The patent attorney may ask questions leading to the inventor to perform additional experiments to broaden the scope of the invention and to support the patent claims that define the invention.

Not understanding the patent process – particularly what constitutes an invention – can lead to adverse consequences. For example, when I began working in my first industrial position, I knew nothing about patents and assumed others would tell me what I needed to know at an appropriate time. I hadn’t realized that I had conceived an invention and reduced it to practice when I left the firm to accept another position. Another chemist who inherited the project submitted an invention disclosure to the company patent department but did not include my name as an inventor. A patent was issued and the invention became the basis for a profitable business for my former employer. Years later, a competitor entered into the same business and because my former employer did not provide the U.S. Patent and Trademark Office (USPTO) with the correct inventors, their patent was rescinded.  This action permitted the other company to use the technology to develop a competitive product, and I learned a very important lesson as young industrial chemist.

John Borchardt is a chemist and freelance writer who has been an ACS career consultant for 15 years. He is the author of the ACS/Oxford University Press Book “Career Management for Scientists and Engineers.” He has had more than 1200 articles published in a variety of magazines, newspapers and encyclopedias. As an industrial chemist, he holds 30 U.S. and more than 125 international patents and is the author of more than 130 peer-reviewed papers.

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5 Responses to Working Effectively with your Firm’s Patent Attorneys

  1. fetzthechemist says:

    Patent attorneys are much more complex than just people who deal with the issues of patents and patent law. Their ways are thinking are fundamentally different than chemists. Their world is rigidly in every aspect a black-and-white one. This contrasts dramatically and can even clash with our chemists’ view of only shades of gray. Attorneys are detail oriented to the point of minutae, chemists are more bigger picture thinkers. During a review of one of my patent applications, the two attorneys working on it spend fifteen minutes discussing the exact meanings of a phrase relative to whether a comma or a semicolon was better at a certain place.

    To deal with that mindset can be frustrating and maddening to a chemist if he or she does not understand not only the business purposes but the way attorneys think.

    • Jaconda says:

      @fetzthechemist,
      I smiled when I read your comment. As attorneys, words matter. For example, in claim construction, the use of “a” versus “the” has legal significance and drives some of the questions that I ask. The attorneys don’t mean to constrain or bore you, but we are trying to get the broadest protection possible based upon what you define the invention to be. And, as a matter of law, the invention needs to be more “black-and-white” and less “shades of gray” in case you find yourself in litigation.

  2. Jaconda says:

    John’s article is a good overview of the patenting process and the issues that might be faced by a scientist working with a patent attorney. As a practicing patent attorney, I would like to add that the scientist should keep in mind that the patent attorney, while technically trained, is working from a legal standpoint not a technical standpoint. The scientist is the technical expert and must work with the attorney to adequately describe the invention. The attorney will do the legal work by drafting the claims and making the legals arguments; however the technical description and response to technical questions falls to the inventor. As I tell my inventors, if I, the patent office or the industry knew the answers to these technical questions, we would not be having this conversation. Why? Because, by definition, patentable subject matter is new. It’s new because you, the inventor, discovered or created it. As such, you are the only one who has the technical expertise to make the attorney, patent office and industry comprehend what it means. I spend a lot of time when drafting the application asking questions about the invention to ensure that it is adequately described and captured to support the claims to the invention and distinguish it from the prior art. I depend heavily on my scientist in doing this so that we can save time during prosecution and hopefully avoid litigation in the future. As the inventor, your efforts in this, are invaluable.

  3. Siddiqi says:

    How do one file the chalenge to patent with USPTO if an inventor name is not included. I have this situation with documented proof. I proposed several compounds for an invention. I left the company. I noticed company filed the patent but my name was omitted. I am confident it was deliberate act. Is there a way to file a complain with the patent office to rescind the patent?

  4. stevekimble9 says:

    It’s very trouble-free to find out any topic on web as compared to books, as I found this post at this website.

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