What Role Does a Patent Attorney Serve?

Responsibilities of a Patent Attorney

The profession of a patent attorney is characterized by diversity. It requires profound knowledge, not only in legal but also in technical areas. For this reason, becoming a patent attorney in Switzerland is subject to strict conditions. It marks the end of a long and demanding education.

The first step involves successfully completing a recognized engineering or natural science degree. The second step involves the actual patent law training with practical experience. This lasts for at least three years and provides comprehensive knowledge in Swiss, European, and international patent law. Consequently, a patent attorney is capable of grasping complex technology-based matters and representing you optimally.

Specialization within Patent Law

The tasks a patent attorney undertakes depend on the employer, the project, and (especially) their specialized education. Since the field of engineering and natural sciences is vast, the lawyer focuses on specific areas during their studies. These areas may include:

• Biotechnology
• Chemistry
• Computer Technology
• Construction
• Electrical Engineering
• Electronics
• Food Technology
• Information Technology
• Manufacturing Technology
• Mathematics
• Mechanical or Mechanical Engineering
• Medical Technology
• Nanotechnology
• Pharmacy
• Physics

This broad spectrum enables the patent attorney to specialize according to their individual preferences. Within these specializations, the specialist's activities can be divided into two different groups: creating and securing, and exploiting and enforcing industrial property rights.

Two Central Areas of Activity

The first group revolves around the questions of whether, how, and where. Is applying for a patent worthwhile? Are the legal requirements met? What formalities need to be considered? A patent attorney identifies relevant intellectual property rights. They verify whether your invention meets legal requirements, prepare relevant application documents, and submit them to the appropriate authorities. Even during the patent office examination, a Swiss patent attorney is available to address your questions. For instance, they analyze received examination reports and advise you on how to respond. The clear objective is to obtain the strongest possible intellectual property right, giving you a significant competitive advantage over competitors.

In the area of exploiting and enforcing industrial property rights, the patent attorney mainly deals with the questions of who and what. Do you want to grant third parties usage rights? What should be the content and scope of this license? How can you respond to an infringement? The highly specialized lawyer assists you in drafting legally sound contracts and ensures the enforcement of your rights.

Creating and Securing Intellectual Property Rights

In the realm of creating and securing intellectual property rights, a patent attorney takes on many different tasks. A core aspect of their work is advising inventors and companies on patents, trademarks, and designs. The expert determines whether an employee invention exists and handles the application and granting of your industrial property rights. If desired, they can also undertake the following tasks for you:

• Preparation of translations with legal and technical content
• Conducting patent searches in relevant databases
• Preparation of relevant documentation
• Drafting the patent application

Drafting a patent application is one of the most important tasks of a patent attorney in Switzerland. It's more complicated than it initially sounds. It's not merely about describing a new product or process photographically. Rather, it requires analytical ability to evaluate technical information from a patent law perspective. To make an assessment, the patent attorney must:

• Hold discussions with the client
• Familiarize themselves with technical concepts and, if necessary
• Conduct comprehensive research

Thorough patent research can clarify many legal questions in advance. Is your invention truly new? Are you infringing an existing patent? Can you invalidate a competing patent? You can either find the answers yourself or have them examined by a specialist. They identify risks and are crucial for the implementation of your innovation. The findings of the assessment are summarized by the patent attorney in their work. They use vocabulary that may seem unfamiliar to laypeople because the terms and sentences must provide a precise description of the scientific content while meeting legal requirements. The attorney informs inventors and responsible decision-makers about the results of their deliberations tactfully.

After Submitting the Patent Application

The Patent Office decides on the granting of a patent. To do this, it verifies whether the submitted documents meet all formal and legal requirements. Can experts understand the application? Are the patent claims clearly and unambiguously formulated? After submitting the application, it's the patent attorney's task to engage with the examiners on the patentability. They must represent their client reasonably. Communication with the Patent Office usually occurs in writing. However, direct contact may be necessary to clarify your concerns. Discussions with the examiners take place either informally over the phone or as formal hearings at the office.

The Rights of the Inventor

An invention typically belongs to the person who developed it. However, the situation may differ when an employee makes an invention. According to Art. 332 CO, if certain conditions are met, the invention – regardless of its patentability – belongs to the employer. It depends on whether:

• The invention is part of the contractual duties
• The invention was made during working hours
• Such circumstances are explicitly (differently) regulated in the employment contract

A special situation arises with the so-called opportunity invention. This refers to a product or process that an employee developed in the course of their duties. Unlike the aforementioned employee inventions, this invention is not part of the contractual duties. It must – provided there is a corresponding contract clause – be reported to the employer. The employer can acquire or release the invention.

For matters related to employee invention law, a patent attorney is the right person to consult. They clarify your legal questions and ensure the orderly transfer of rights from the inventor to the company. If the matter involves multiple countries, the experienced lawyer keeps an eye on the different legal situations.

Patent Attorney for Trademark Protection

A patent attorney doesn't only deal with patents. Their work also extends to other areas of intellectual property law – primarily design law, trademark law, and copyright law. The legal foundations for this are learned by the lawyer during their specialized education. A technical background is not as essential in this field, so it's also served by other attorneys.

Visual, Verbal, and Other Trademarks

A trademark is intended to distinguish products or services of a company from those of competitors. This can be achieved in various ways: through images, colors, shapes, logos, slogans, sounds, words, and even smells. Whether your identifier enjoys protection or could be protected by registration as a trademark, a patent attorney can tell you. They examine whether you are infringing on a third party's rights and assist you in achieving your goals.

Designs

The patent attorney also advises and represents their clients regarding their design questions. A design is the aesthetic representation of an object – a design. A patent attorney from Switzerland assists you in preparing the necessary documentation and ensures that your design protection is not unnecessarily limited.

Exploitation and Defense of Intellectual Property Rights

The filing of a patent is just the first step. Once the intellectual property right has been successfully established, it needs to be managed, exploited, and defended. Management involves all administrative actions necessary to maintain the patent, such as paying any annual fees. Exploitation, on the other hand, focuses on using the patented invention as profitably as possible. Typical tasks of the specialist in this context include consulting, drafting license agreements, and pursuing infringements.

Support in Contractual Arrangements

Many legal questions arise in connection with the acquisition and use of industrial property rights. Most of them concern the type and amount of compensation, the level of licensing fees, and the scope of use. A patent attorney deals with these and many other aspects in the creation and implementation of license agreements.

Resolution of Disputes

When filing a patent, the Patent Office examines only a few legal requirements. For example, it assesses whether an invention violates public morality or public order. Legally, an invention is only patentable if it's also innovative. However, this aspect isn't (yet) examined by the Patent Office. Therefore, the validity of your patent remains uncertain for a while. In practice, disagreements often arise regarding the legitimacy of an intellectual property right. Parties may also disagree on the amount of licensing fees. If no agreement can be reached, matters must be resolved before the relevant authorities and courts. In such cases, the patent attorney discusses the circumstances of the particular case with the opposing party, examiners, or judges.

Is a Patent Attorney Worth It?

At first glance, filing a patent seems straightforward – so why consult an attorney?

However, patent law is difficult for legal laypeople to navigate. It's all about nuances: many details and pitfalls are hidden and are not recognizable without experience. It starts with the fact that the application must meet certain formal and legal requirements. A crucial point is also the patentability, which is not automatically examined by the authorities.

An experienced patent attorney helps you efficiently and sustainably protect your intellectual property. They answer all your questions regarding industrial property rights and develop an appropriate protection strategy. Whether you are an individual applicant or work in a large company, the expert strives to ensure comprehensive protection of your rights. Assertive and competent, they represent your interests before authorities and courts. If you need advice from a Swiss patent attorney, GetYourLawyer assists you in finding a lawyer who suits you and your needs. The platform has a pool of selected attorneys with extensive experience and expertise. Start your inquiry today and choose from up to three offers.