Material adapted from Patent Offense: 7 Steps to a Safe, Secure Patent Portfolio by: Craige Thompson.
Why Is Engineering And Technical Acumen Important For Patent Law?
Because patents involve two domains (legal and engineering technology), my firm specializes in electrical engineering. I believe it is important to have a technical background, regarding the type of patent being developed. Because I am not an expert in the field, I would be lost in writing a patent involving DNA microcellular technology.
My expertise is in electronics, electrical engineering, product development, analog circuitry, design, electromechanical devices, computers, and software. I have spent years designing and developing products (within the above fields of technology), adding tremendous value for the client. My team is comprised of patent attorneys/agents, with experience in electrical engineering and computer sciences.
We Speak Fluent Engineer.
Many attorneys writing electrical engineering patents do not have the needed “hands-on” industry experience. If you can find an attorney with an educational background in electrical engineering, it is rare for them to have actual experience as a design engineer.
Businesses tend to “miss out” on their patent value, due to the lack of technical knowledge/experience of many attorneys. An attorney who speaks “engineer,” can understand the subtleties and nuances of the technology surrounding their invention.
When the background of the attorney does not meet the client’s needs, information is transferred less efficiently, with the attorney unable to grasp the true value of the inventor’s ideas. In addition, the attorney is unlikely to guide the inventor to “think outside” their product-focused envelope and plan effectively for protecting their innovations well into the future.
There is no substitute for patent counsel with the ability to understand the invention and explore additional/future possibilities. Collaboration between effective patent counsel and the client adds tremendous value, fostering the distilling and grasping of essential core values of the invention.