Chemical patent attorney

A chemical patent attorney could take a position with a medium- or large-sized firm and become involved in patent litigation. In this phase of the profession, the lawyer is required to match wits with an opponent in what is really an adversary contest. For those who find satisfaction in intellectual competition, this can be an exciting career avenue. 

Chris Miller I would like to thank the many patent attorneys who helped me learn patent law early in my career. I d like to specially thank Dr. Michael Straher Esq. who was my first patent boss and was incredibly patient and kind in dealing with my many questions. Despite what you may have heard about law firm partners, not all of them are difficult to work for. In a similar vein, I d like to acknowledge the entire Marc DeLuca Esq. group for all that they did to assist me in my early development as a chemical patent attorney. 

Recently the writer was presented with a facsimile copy of U. S. Patent No. 1, granted July 31, 1790, which bears the signatures of George Washington and Edmund Randolph, then president and attorney general, respectively, of the United States. It turned out to be a chemical patent,... 

Section 103 does not mention such subject matter as homologs, etc. In fact, it contains no clause specific to chemical things. Yet the issue presented by cases in the area here considered must be decided by recourse to its language. The only way open to patent attorneys and patent-minded chemists of getting at an answer on the patentability as to any closely art-related compound is by comparison of the facts in a disputed case with those in the decided cases in this particular area. We have homologous cases in the law as well as in chemistry. 

The above generalization may fortunately be going out of style, in that more and more chemical patents cany specific titles and have claims that are informative even to amateur patent attorneys. An excellent example is the patent on streptomycin and process of preparation, which was assigned to the nonprofit Rutgers Research and Endowment Foundation (14). The specification scarcely differs from a scientific paper and the process claims constitute easily understandable summaries of essential steps in the manufacturing procedure. Claim 13, a product claim, cannot be surpassed for conciseness T3. Streptomycin. ... 

While the principal value of the book is for the professional chemist or student of chemistry, it should also be of value to many people not especially educated as chemists. Workers in the natural sciences—physicists, mineralogists, biologists, pharmacists, engineers, patent attorneys, and librarians—are often called upon to solve problems dealing with the properties of chemical products or materials of construction. Eor such needs this compilation supplies helpful information and will serve not only as an economical substitute for the costly accumulation of a large library of monographs on specialized subjects, but also as a means of conserving the time required to search for... 

Applicants and their attorneys prosecuting chemical and pharmaceutical applications will find the way less arduous and the likelihood of ultimate success greatly increased if they are able to build adequate records so as to obviate Section 101 and 112 issues. A definitive statement of the use (the patentable utility) of the invention, where not obvious, should be included in the specification. Uses for which only meager support can be mustered should not be included. The intended use having been carefully defined, there should be an adequate detailed disclosure of how to use the product, method, or process of the invention. 

Patent attorneys who represent institutions which are developing antibodies and related chemicals, and who wish to retain rights to patent, license or commercialize those research products, approach negotiations defensively. It is easier to find out what they are not willing to do than to determine what they are willing to do. In California, we have found it very difficult to get patent attorneys to declare the nature of their interest and to explore ways the prodicts of research can be used by public and private institutions. 

Fifing a U.S. patent application without having done any chemical or biological experiments at all is permissible. So is adding to it examples of experiments that were never done. The U.S. patent law presumes that individual inventors cannot afford to do all the experiments needed to realize their conceptions and thereby substantiate their claims (Maynard and Peters, 1991). It lets their applications include such examples, effectively to increase public benefits. Here is a European patent attorney s rationale for such examples, with italics added. The inclusion of a paper example in a patent is not a false representation that the compound has been made it is an honest representation that the compounds can be made in that way (Grubb, 1982). 

For example, imagine the inventor suspected that a competitor s claim to certain compoimds is deficient. His patent fails to teach any workable method for making them and instead alleges to have prepared them by a chemically unreasonable reaction. These compounds would therefore not have existed before the present invention, which would be patentable. To succeed in patenting his own inventions, a chemist must find, read, and understand his competitors patents. Attorneys and agents without training in organic synthesis cannot be expected to spot imworkable synthetic methods. 

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