With the help of patent counseling you can get detailed information on ways of protecting your rights. Patent counseling can be sought before launching a concept or product in the market. This ensures that your intellectual property is patented and other competitors are not able to use that particular concept. This also ensures that the technology required for getting success with a new product or service is not mishandled or infiltrated by others. Intellectual property laws are very strict about infringement of such rights, and hence getting a patent can ensure protection from the same.
Job Responsibilities of a Patent Counselor
The first chore of a patent counselor is to review and analyze the current patent inventory of the client, if there is any. Then you need to evaluate the strategies used by them and its success. In most cases one can find clients formulating strategies apart from filing for patents on inventions. Hence, there is a need to form a coherent upbeat strategy. You should assess the existing portfolio of the issued patents, and those which are waiting in application. The counselor should also be aware of the products under development, and those which are planned for the future. Documentation and storage of data should be done with caution as it is required for litigation purposes.
Suggestions should be made to correct previous errors and thus optimize future enforcement. If such problems do exist then it is best to work on them in an ex-parte proceeding instead of permitting litigation at later stages where objections can be met by the opponents. You also have to formulate the draft with details on prospective infringers. This should be done with caution as amendments and claims cannot be done later. It is always easier to file against a direct infringer as compared to the contributory infringer. You should formulate different series of claims for dissimilar applications for faster drafting and prosecution.
You should also review the patent status of the competitors or opponents. At times there are some applications, which are yet too mature as patents. And this can provide you an upper edge over the opponents. Many infringement issues would require validity study, which would ensure apt use of licenses. You may also have to travel a lot or opt for foreign filing in some cases.
There is a need for the counselor to assess the patent strength of the client in different areas. Often, technological details should be categorized, and then the patent should be applied to different areas for better coverage. Competitive analysis activities are required to prevent competitive products from infringing the patent of clients. Hence, you should be aware of the different licensing needs of the clients, which is vital before agreements may be executed. Apt usage of patents should be done for preventing the client's products from infringing other parties.
More responsibilities are negotiating and drafting patent licenses, patent prosecution, counseling clients, dealing with patent infringement assertions, patent strategy development, patent drafting, and opinion work.
Requirements
Academic and Training
To be a patent counselor you should have a bachelor's degree from an accredited law school. You can also be a patent attorney, with specialization or certification in intellectual property. Candidates need to have attended at least 4 years of Patent Law practice course. A technical background in subjects like electrical or computer engineering or computer science may be preferred.
The candidates should also have certification to carry out practice in any one of the states of the US. They are also required to be admitted to the US Patent and the Trademark Office.
As a patent counselor you should be well versed with the fundamental principles of patent law. You should have a keen eye for invention identification, management patent portfolios in cost effective ways, and also use innovative techniques for patent application procedures.
Skill Set
As a patent counselor you should have effective communicative skills along with convincing power. A good memory would ensure that you are able to remember details about the patent norms and laws. Being in touch with the local patent office also helps to get constant upgrades. Organizing and planning skills are crucial for patent lawyers because it helps them to ensure completion of projects on time, and leaves little room for errors.
Salaries
The salary for entry level counselors is about $60,000 to $80,000 while experienced counselors can get about $100,000 per year.
The scope of patent counselor extends beyond corporate groups and large enterprises. There are plenty of small companies seeking regular counseling to protect their infringement rights.
- See Top 10 Reasons Most Law Firms Have No Idea How to Hire and Evaluate Patent Attorneys for more information.
