The Patent Process: What Non-IP Lawyers Need to Know

As trusted advisors, lawyers are asked many questions about legal matters outside their area of practice. One area of law that most lawyers do not have any experience with is patent law, and in particular, the patent process. The patent process, specifically referred to as patent prosecution, requires a special license which in turn requires an undergraduate degree in science or engineering. Because it is such a specialized area of practice, with about only 40,000 active practitioners in the U.S., most law schools do not offer much in the way of course work in this area.

However, often lawyers who practice business or corporate law, trusts and estates, tax, bankruptcy and even family law are confronted with issues of invention, patenting and patent ownership. The cost and time of obtaining a patent along with its economic value can figure into many of these matters. Additionally, clients in start-ups are unsure about when or whether they should seek patent protection.

Pat Werschulz of Werschulz Patent Law, LLC is a licensed patent attorney who has practiced patent prosecution for many years. She outlines the patent process, reviews the relevant governing statutes and shows how clients without proper guidance may end up losing their patent rights permanently. 

1. Review the statutory requirements for obtaining a patent
2. Learn who may apply for a patent and who may own a patent
3. Learn the pathway from invention to a patent for both US and foreign countries
4. Understand the importance of non-disclosure agreements throughout the process
5. Discover the pitfalls of working with invention companies