Hiring a Biochemistry Patent Attorney

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.

Patent Filing

If you are ready to take your invention to the next level, here are some basic steps to keep in mind. These six steps will help you approach patent filing.

Step 1. Choose the Right Patent

There are three kinds of patent filing available through the U.S. Patent and Trademark Office (USPTO):

1. Utility patent: protects a new or useful invention

By law, inventors can only obtain utility patents on specific kinds of inventions. In general, inventors cannot patent unmodified natural products, abstract ideas or algorithms unconnected to real world applications.

2. Provisional patent application: secures a temporary, one-year patent-pending status

The inventor must file a utility patent application before the end of the year to maintain patent pending as of the provisional filing date.

3. Design patent: protects an ornamental design

Design patent applications are only for ornamental design. Design patents cannot protect any functional benefit that the design may confer.

Step 2. Document

Inventing happens in two steps: 1) conceiving the invention, and 2) reducing it to practice. Be sure to document both steps. For example, if your invention is a new machine made from combining two existing machines, then you must document when you had the idea to combine the machines to show conception.

Reduction to practice means taking that idea and making it work. For the combination of the two machines, you must document how to successfully combine them. Include proof the invention works and some alternative approaches. Include a schematic, drawing or photo of the combined machine and possible alternative ways of combination.

Step 3. Keep Your Idea Confidential

Patents require absolute novelty, meaning that any public disclosure will compromise any future patent filing. Your disclosure of the invention is just as problematic as another inventor or scientist publishing similar results.

In the United States, an inventor has one year to file a patent application after making a public disclosure. But no other country gives a similar grace period—the minute you breach secrecy most worldwide patent rights are gone. Once your provisional patent application is filed then the patent is pending and you are safe to discuss your invention publicly.

Step 4. Conduct a Patent Search

The breadth of a patent is limited by prior inventions and other publications. You are the expert on your invention. Scour your trade journals, conference presentations, catalogs and other publications.

If you search by yourself, online database searches are like wringing a sponge; the trick is knowing when to stop. Start with broad keywords that describe the field and then add specific keywords that describe the novel features of your invention. The most important thing in conducting a search is to know what makes your invention novel and to take the time to read each reference vigilantly to see if it has that novel thing.

Online patent search services conduct a search of the USPTO database of existing patents and published patent applications for you based on several different criteria and provide you with a report. The report can help you identify possible conflicts in advance and determine the patentability of your invention.

Step 5. File a Patent Application

You can file a patent application on behalf of yourself or your co-inventors. Alternatively, you can hire a registered patent agent or attorney to file your application for you. Patent applications require both legal and technical expertise and even small mistakes can dramatically compromise the value of the patent. That expertise comes at a cost and even a simple patent can cost several thousand dollars.

The advantage of doing work yourself is cost savings. The downside is that you lose the benefit of your lawyer’s experience, even in the small steps. For example, if you write a description of a machine that you invented, you may limit that machine to components that you actually used. A patent attorney with experience in the field may think to suggest or research different components that might work.

As a result, you may have a harder time enforcing your patent against competitors because your description did not take the time to expand on your invention. A competitor may find an easy work-around. Patents are filled with tiny details and getting any one of them wrong may compromise your patent.

Step 6. After Your Patent is Filed

Patents are expensive. Once your patent issues, you might wonder how you will get a return on the investment. Are you going to start a company? Talk with potential investors once you have a filing date. Do you want to sell or license the patent to a company? Find a useful contact at the company once your patent is pending. You do not have to wait until the patent is issued. Some investors invest in pending patents and some companies license pending patents.


Patent Licensing

A patent license is an agreement that allows someone else to commercially use or develop your invention for a specified period. The owner of the invention is the licensor, and the person who is receiving the license is the licensee. You will receive payment in return that may be structured as a single-time payment or as continuing payments called royalties.

Licensing the right to make, use, or sell your product is usually the most profitable route for inventors. As patent holder, you retain ownership of the invention and earn royalty payments on future sales of the product. You can grant an exclusive license to one company or several companies.

A patent owner can license or transfer interest in a patent. The licensor gives up the right to the intellectual property, usually for a certain period. During this time, the licensee can make or sell the invention or design. The licensee can also profit from the intellectual property during the license period.

There are two types of patent licenses:

  • Exclusive Patent Licenses: These transfer all ownership rights to a licensee. The licensor still owns the title. All patent owners must agree to an exclusive license.
  • Non-Exclusive Patent Licenses: These allow the licensee to produce the invention or design. The licensee doesn’t gain exclusive rights. The licensor and other parties can also produce the invention or design. Only one patent owner has to agree to a non-exclusive license.

Patent Licensing Process

You can start the process of licensing your patent by making a list of manufacturers with strong distribution channels. You can find manufacturers by attending trade shows, searching an online manufacturer database for companies making similar products to yours, and finding manufacturers in stores and magazines that cover similar products. For a fee, the United States Patent and Trademark Office (USPTO) can publish a notice regarding the availability of your patent for license in its official gazette.

In general, you should have your licensing agreement negotiated and drafted by a patent attorney. The agreement will spell out any upfront payments, amount of royalties, and potential infringement issues. You can exclusively license the patent to a particular entity or grant a non-exclusive license to more than one entity or individual.


Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.