Patent lawyers are required to be experts in intellectual property law as it pertains to securing and protecting an inventor’s property rights to a unique, useful and non-obvious invention. In addition to passing the bar exam in the state where they practice, which all attorneys must do, patent attorneys must have passed a second exam referred to as the “patent bar exam” that grants them a license to represent clients before the USPTO. Patent attorneys are also required to be experts in one or more technical areas important to understanding clients’ inventions. This usually means they’ve earned a bachelor’s degree in a technical field of engineering or science, such as mechanical engineering, physics or biology.
When selecting a biochemistry patent attorney, verify that he or she has passed the state bar exam and is in good standing with the state bar association – meaning not having been disbarred or formally disciplined. An attorney you are considering should have at least a few years of patent law experience and be knowledgeable in the subject area related to the invention you are patenting. For example, if you’re filing a biotech patent application, you’ll want an attorney with a biochemistry patent background, not one whose area of expertise is computer engineering.
A good biochemistry patent attorney will first advise you on whether your invention is patentable. A patent attorney can also advise you on whether it makes more sense to start by filing a provisional patent application or nonprovisional patent application and whether you should also file for international protection. The attorney’s work on the patent application will help you explain and claim your invention in a way that maximizes your patent rights. He or she will know how to conduct a thorough search for prior art so that you don’t waste your time and money filing a patent application that will be rejected because your invention doesn’t meet the novelty requirement.
A biochemistry patent attorney will prepare your patent application to meet the USPTO’s exacting requirements to minimize delays in the patent application review process. This will free up your time to focus on your own business. If the USPTO grants your patent, a patent attorney can help you enforce your patent rights, which is essential to maximizing the economic value of your invention. And if the USPTO’s patent examiner rejects your initial application, an attorney can help you appeal the decision.
Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.