Patent Law as a career

As up and coming engineers and scientists, it is valuable for CSM students to have a basic understanding of patent law. In addition, most CSM graduates are qualified to work as patent agents since they hold a B.S. degree in a field of science or engineering. Ian Schick, a CSM alum with a B.S. in Engineering Physics and a Ph.D. in Materials Science asserted that there are options for CSM students interested in the business side of STEM aside from industry employment.

Schick could have pursued a career either in research or with a plethora of other jobs with his degrees from Mines. Instead, his passion for business led him to his current work as a patent agent and patent law school student. Schick explained that patent law careers offer a lot of diversity. Aside from the opportunities to open a solo practice, work in large global law firms with hundreds of lawyers, work in small law firms with five or fewer offices, and work in a business or university’s in-house legal department, there are special advantages for scientists and engineers. The patent law careers offer consistent opportunities to apply technical backgrounds and expertise, while providing the inside advantage to work with and be aware of cutting edge technology and acquire a great deal of legal knowledge.

Specifically, there are three main careers in the patent law field: First, prosecution, which deals with the process of obtaining patent rights for clients. To work in prosecution, one must be admitted to the US Patent Bar and have a science degree but is not necessarily required to have a Juris Doctor (JD) degree. The second is litigation, which is the field for those who enforce patent rights. To work as an enforcer in litigation, one must have a JD and be a member of the state bar. The third, licensing, deals with the formulation and granting of licensing agreements between the patent holder and the licensee. To work in the licensing field, it is necessary to be an attorney – have a JD and admission to the state bar.

Of most immediate relevance for Mines graduates would be the field of prosecution, because it does not require a JD or admission in the attorney’s state bar. Interestingly enough, one requirement for admission to the US Patent Bar is good moral character, the next requirement being the scientific and technical qualifications necessary to render service. This gives hard-working Mines grads a good opportunity who have both attributes to their name.

Patents and copyrights come from the constitution of the United States of America, Article 1, Section 8:

“The Congress shall have power to lay and collect taxes, duties, imposts and excises, to pay the debts and provide for the common defense and general welfare of the United States; but all duties, imposts and excises shall be uniform throughout the United States; … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;…”

Patents are government grants that refuse the right for others to make, use, offer for sale, sell, and/or impart an invention for a limited time. Patents provide negative rights. In exchange for patent protection from the government, inventors provide public disclosure of technical advancements.

Almost anything can be patented. Abstract ideas, laws of nature, and natural phenomena are the only categories not valid for patents. Patents are granted to new (novel) and nonobvious applicants. Novelty is classified by firstness and promptness – one must be the first inventor and protection of the invention must be sought within a year of the invention going public. If an inventor mentions the invention to someone, publishes the invention somewhere like a journal, offers the invention for sale, publicly displays the invention, and/or offers the invention in public or commercial use regardless of how much detail is revealed, the one year period is considered to have been initiated by that action.

Aside from the eventual acquisition of patent, going through the long and costly application process legally allows applicants to indicate that their invention is “patent pending” (and therefore protected against people claiming originality of the invention and filing for a patent application) from the moment the application is submitted.

The process of obtaining a patent is twofold. First, preparing and filing a patent application, and second, prosecuting the application. The first step involves invention disclosure, documentation, and a meeting with a patent law attorney. After the initial meeting, attorneys have the proposed invention evaluated against pre-existing patents for similar inventions and then they prepare a draft of the specification, drawings, and claims. The inventor reviews and comments on the draft. Once a finalized version is made, the attorney files the document to the US Patent Office (USPO) and is required to disclose known “prior art” throughout the prosecuting process and to continue informing the patent office of all closely related pre-existing patents.

Once the specification, drawings, and claims have been submitted and the prosecuting has begun, each applicant is assigned an examiner in the USPO, who 99% of the time will give the prosecutor an initial rejection of the patent application. At this point, inventor and attorney then formulate a response to the statement of rejection (usually based on an interview conducted with the USPO examiner off the record) and carve out the invention to make it unique. After the response is submitted, the examiner will either give allowance or another rejection. This process continues until the inventor runs out of funds to pursue the patent or the examiner provides an allowance and the patent is granted.

Anyone who has the conception and “reduction to practice” (RTP) is considered an inventor. “Reduction to practice” is the creation of an “actual,” a working example to demonstrate the invention, or a “constructive,” a description of the invention such that a layman in the relevant field could practice the invention. In the application for a patent, intentionally adding inventors or disincluding correct inventors can invalidate the patent. Due to the unique language of the US constitution regarding inventors and the government’s need to provide them security, patents are granted differently in foreign countries. In other countries, there is no one year grace period, the scope of patentability is narrower, and patents are granted to the first applicant rather than the first inventor.

Recognizing the difference between inventorship and ownership is also of great importance here. Although all inventors are entitled to be granted joint inventorship, ownership rights can be forgone. When working for a company, employees are frequently asked to sign contracts giving over their patent rights to the company.

Several students and professors were interested in the validity, usefulness, and relevance of patents in this day and age. In today’s world, open source projects are gaining prominence and in certain fields such as computer and software development, granting patents is a tricky business. Schick admitted: “Its a one-size-fits-all solution and it doesn’t always work.” Like patent trolls, who actively investigate infringement of patents and sue the violators for their own fiscal gain, there are people in every profession and field who abuse the system. Having made this concession, Schick said, “[patents] promote disclosure of inventions” and “the primary purpose is to drive innovation.” “There are always people gaming the system, but that is a minority of cases.”