What is a Patent Lawyer and Their Core Responsibilities?
Intellectual property (IP) law is a complex and specialized field that protects the creations of the mind. Among the many types of IP, patents are perhaps one of the most critical forms of protection for inventors, businesses, and entrepreneurs. A patent grants the holder exclusive rights to a new invention, but obtaining this protection is not a straightforward process. This is where a patent lawyer comes in.
A patent lawyer, or patent attorney, is a legal professional specializing in intellectual property law with a focus on patents. They assist clients in securing patents for their inventions, ensuring that their intellectual property rights are protected and enforced. At Burger Huyser Attorneys, we help inventors and businesses navigate the complexities of patent law, providing guidance every step of the way.
A patent lawyer wears many hats throughout the patenting process. Their primary role is to ensure that inventors’ intellectual property is protected and that their rights are upheld. Here are some of the key tasks that a patent lawyer performs:
1. Patent Search and Assessment
Before an inventor files for a patent, it’s essential to determine whether the invention is eligible for patent protection. A patent lawyer will typically start by conducting a patent search. This search involves combing through patent databases to see if a similar invention already exists. By reviewing existing patents and other forms of public disclosure, a patent lawyer can assess whether the invention is novel and non-obvious—two of the core criteria for obtaining a patent.
- Novelty Check: The invention must be new and cannot have been publicly disclosed or patented before.
- Inventiveness: The invention must involve an inventive step, meaning it cannot be obvious to someone with knowledge in the relevant field.
If the lawyer finds similar inventions or prior art, they may advise the inventor on how to modify their invention to ensure it meets the patentability criteria.
2. Preparing and Filing a Patent Application
The most important role of a patent lawyer is to help inventors prepare and file a patent application. This involves drafting the patent claims, which define the scope of the invention and what exactly is being protected. Patent claims are one of the most crucial aspects of a patent application because they determine the boundaries of the inventor’s exclusive rights.
A patent lawyer will also:
- Prepare a detailed description of the invention that explains its functionality, components, and how it differs from existing inventions.
- Create diagrams and drawings (if necessary) that visually represent the invention.
- Write the abstract, summarizing the invention for the patent office.
The lawyer will ensure that the patent application is complete, clear, and precise, as any vague or unclear descriptions could jeopardize the success of the application.
Once the application is ready, the patent lawyer will file it with the relevant patent office, such as the Companies and Intellectual Property Commission (CIPC) in South Africa, or other international patent organizations if the inventor seeks global protection.
3. Responding to Office Actions and Patent Examinations
After a patent application is filed, it undergoes examination by the patent office. The examiners assess the application to ensure that it meets all legal requirements for patentability. During this process, the patent office may issue an office action, which is a communication that can request further clarification or amendments to the application.
- Office actions can include objections to the claims, requirements for more detailed descriptions, or requests for additional information.
- A patent lawyer is responsible for responding to office actions in a timely and professional manner, addressing any concerns raised by the patent office.
In some cases, a patent lawyer may need to make amendments to the patent application, refine the claims, or provide further evidence to prove the invention’s novelty and inventiveness. They will also handle interviews or meetings with patent examiners when required.
4. Patent Prosecution and Legal Strategy
A key part of a patent lawyer’s job is to guide clients through the process of patent prosecution, which involves working with the patent office to obtain approval for the patent. Patent prosecution includes all activities from filing the application to securing the granted patent.
Patent lawyers will:
- Negotiate with patent examiners on behalf of clients to resolve issues and ensure the application is approved.
- Develop legal strategies to strengthen the patent application and maximize the scope of protection. They may recommend adjusting claims to cover a broader range of inventions or filing multiple patents for different aspects of the same invention.
- Advise clients on patentability issues and provide options to safeguard the invention in the best possible way.
5. Patent Litigation and Enforcement
Once a patent is granted, the job of a patent lawyer doesn’t end. A key role of patent lawyers is to help enforce patent rights and protect against infringement. If someone else uses the patented invention without permission, the patent holder has the right to take legal action.
Patent lawyers can help with:
- Patent infringement lawsuits: If another party is using your patented invention without authorization, a patent lawyer can assist with taking legal action to stop the infringement and seek damages.
- Cease and desist letters: If you believe someone is infringing on your patent, your lawyer can send a cease and desist letter to stop the unauthorized use.
- Defending against infringement claims: If you’re accused of infringing on another patent, a patent lawyer can help you defend your rights in court or through settlement negotiations.
They also assist in licensing agreements, where patent holders may choose to license their patents to others in exchange for compensation. This provides a revenue stream for the patent holder while allowing others to use the protected technology.
6. Patent Portfolio Management
For businesses with multiple patents, managing a patent portfolio is crucial. A patent lawyer can help businesses:
- Strategise on patent filings to align with business goals.
- Track renewal deadlines to ensure that patents remain in force.
- Evaluate the commercial value of patents and decide which patents to maintain or sell.
Proper patent portfolio management can help businesses maximize the value of their intellectual property and prevent patent lapses.
Why Do You Need a Patent Lawyer in South Africa?
Navigating patent law is a complicated task that requires both legal and technical expertise. Here’s why consulting with a patent lawyer is crucial:
- Expertise: Patent lawyers understand the complexities of patent law and can provide the best advice on whether your invention qualifies for a patent.
- Maximise Protection: With their knowledge of patent claims, a patent lawyer can ensure that your invention is protected to its full extent.
- Efficiency: A patent lawyer knows how to handle patent applications quickly and effectively, minimizing delays and costs.
- Risk Reduction: By ensuring that your patent application is error-free, a patent lawyer can help you avoid potential legal challenges and maximize your chances of success.
- Strategic Advice: Whether it’s deciding whether to patent internationally or negotiating licensing agreements, a patent lawyer can provide strategic advice to maximise the value of your intellectual property.
A patent lawyer plays a pivotal role in securing patent protection and ensuring that your intellectual property remains yours to control.
At Burger Huyser Attorneys, our team of experienced patent lawyers is here to help you at every stage of the patenting process—from patent searches to filing and enforcing your rights. If you have an invention that you want to protect, get in touch with us today.
Contact Burger Huyser Attorneys, and book a consultation.
To speak to one of our experienced attorneys in South Africa for immediate assistance, contact us on the numbers below:
Randburg call 061 516 6878; Roodepoort call 061 516 0091; Sandton call 064 555 3358;  Pretoria call 064 548 4838;
Centurion call 061 516 7117; Alberton call 061 515 4699; Bedfordview call 061 536 3223
DISCLAIMER: Information provided in this article does not, and is not intended to constitute legal advice. READ MORE
