1. Patent Law A Career Choice For Engineers Azadeh Khadem Registered Patent Attorney November 25, 2008 Azadeh Khadem Registered Patent Attorney November 25, 2008

2. © 2008 Knobbe Martens Olson & Bear LLP2 Patent Law As A Career  Learn about exciting new technologies before everybody else  Work with and learn about a variety of technologies and companies  Work directly with high level management Opportunities for management positions  Higher salaries  Possibly longer work hours

3. © 2008 Knobbe Martens Olson & Bear LLP3 Definitions Intellectual property (IP)  A field of law relating to legal protections for creations of the mind: Artistic works such as musical compositions, photographs, poems, etc. - protected by copyrights Symbols and names used in commerce – protected by trademarks Inventions – protected by patents

4. © 2008 Knobbe Martens Olson & Bear LLP4 Definitions  Patent - a legal instrument giving exclusive rights to the owner for use and practice of an invention claimed in the patent  Patent law - a legal field that deals primarily with laws and regulations regarding acquiring patents and enforcing them

5. © 2008 Knobbe Martens Olson & Bear LLP5 Patent Law  Governed by federal law in the United States  Different countries have their own rules and regulations  International treaties cover multinational patent applications

6. © 2008 Knobbe Martens Olson & Bear LLP6 Patent Law  Distinct fields of practice: Patent prosecution – deals primarily with obtaining a patent Patent litigation – deals primarily with enforcing a patent In-house attorney – deals with a combination of both prosecution and litigation

7. © 2008 Knobbe Martens Olson & Bear LLP7 Patent Prosecution  Patent prosecution includes areas of patent law that deal primarily with obtaining patents  A patent attorney who practices patent prosecution is involved in all aspects of acquiring and maintaining patents  Most interactions are with the United States Patent and Trademark Office (USPTO) and inventors

8. © 2008 Knobbe Martens Olson & Bear LLP8 Getting A Patent  Conducting discussions with an inventor about his/ her invention  Writing a patent application based on information received from the inventor and knowledge of the law  Putting application in correct format for submission  Preparing additional required paperwork  Submitting application to USPTO

9. © 2008 Knobbe Martens Olson & Bear LLP9 United States Patent and Trademark Office  Government agency located in Washington, DC  Responsible for Receiving patent applications Assigning patent applications to a person for examining Determining whether or not a patent can be granted

10. © 2008 Knobbe Martens Olson & Bear LLP10 Patent Office Procedure  Correspond with patent office regarding patent application and patentability of its subject matter  Make changes to application claims  Review application and prepare for issuance, once application is allowed

11. © 2008 Knobbe Martens Olson & Bear LLP11 Patent Prosecution  Patentability studies Conducting research and analysis and determining whether an invention is patentable  Infringement studies Conducting research and analysis and determining whether a product or method infringes a patent

12. © 2008 Knobbe Martens Olson & Bear LLP12 Patent Prosecution  Developing Strategies Intellectual property is one of the most central and primary assets of companies It is very important to get the best protection for any given intellectual property When there are financial limitations, companies have to decide which inventions to pursue and determine how to get the best protection from the numbers of patents they can pursue Because of importance of IP, patent attorneys may be in direct contact with high level management

13. © 2008 Knobbe Martens Olson & Bear LLP13 Patent Litigation  Patent litigation refers to areas of patent law that deal primarily with enforcement of patents After you have obtained a patent, you can confront competitors that are using or making the same technology as the one you have patented

14. © 2008 Knobbe Martens Olson & Bear LLP14 Patent Litigation  Various steps: Infringement study Cease and desist letter Starting a lawsuit by filing a complaint Writing documents and papers for the court and to the other side Discovery – producing and obtaining documents relevant to the subject of lawsuit Depositions – questioning a witness under oath

15. © 2008 Knobbe Martens Olson & Bear LLP15 Patent Litigation In front of a judge or jury: Hearings at the court where one aspect of the case is presented to a judge Settlement conferences Mediators facilitate settlement discussions Trial Rare in patent cases

16. © 2008 Knobbe Martens Olson & Bear LLP16 Patent Litigation  Direct contact with high level management regarding issues such as: Risks involved in litigation Patent owner – Patent could be declared invalid Patent infringer – May be forced to pay for infringement damages, and may also be prevented from producing and selling the infringing products Costs associated with litigation

17. © 2008 Knobbe Martens Olson & Bear LLP17 In-House Counsel  Work directly for a company  Manage a patent portfolio  Decide what inventions are worthy of patent protection  Create IP strategy  Work with and manage outside counsel

18. © 2008 Knobbe Martens Olson & Bear LLP18 The Path To Becoming A Patent Attorney  By being here, you have taken the first step towards becoming a patent attorney  Engineering or science background required  LSAT (Law School Admission Test)  Good GPA  Resume

19. © 2008 Knobbe Martens Olson & Bear LLP19 The Path To Becoming A Patent Attorney  Two different paths: Starting law school right after college – May save you some time Working a few years – May help you gain work experience and engineering expertise

20. © 2008 Knobbe Martens Olson & Bear LLP20 The Path To Becoming A Patent Attorney  Law school: Three years - involves a lot of reading and analyzing Grades/class rankings are very important in job placement However, because only students with engineering or science backgrounds can enter patent law, there is less competition in patent law than other areas

21. Azadeh Khadem Knobbe Martens Olson & Bear LLP kmob.com