Cassie Hannan - Patent Paralegal
Cassandra A Hannan

A patent paralegal is a person who is specially trained to work with a patent attorney or patent agent to represent inventions and prosecute patent applications at the patent office. There are two types of required training to acquire the title: the paralegal training and the patent training. Patent specialized paralegals are a rare and unique resource able to help inventors seek patent protection for their inventions.

In order to understand what the patent kind of paralegal is, it is helpful to know what a paralegal is. In the United States, the definition of a paralegal is a legal professional who works in a law firm or corporate office in association with an attorney or lawyer, supporting the needs of the clients. A paralegal can be vital to the success of a law firm or corporate office and holds many of the same responsibilities as a lawyer or attorney, albeit with few limitations. Paralegals improve the efficiency and effectiveness of an attorney and help ensure accuracy and precision in their work.

Regular paralegals can work with trademarks and copyrights with some additional specialized education, experience, and/or training for the processes and methods used. But, when it comes to the most prized form of intellectual property, patents, in order for a paralegal to work with patents, a lot of highly specialized training required. Adding the patent training needed is conservatively double the training or more than paralegal training alone. Patents are very complex; the application and prosecution details are complicated and can be convoluted.

What Does a Patent Paralegal Do?

The patent paralegal works with all aspects of the patent application process from invention intake to allowance and issue of patents. There are a broad range of tasks they may be asked to do by the patent practitioner they work for. Not only is the patent application process lengthy and complex, but patents must be maintained after prosecution if granted. Every step to attain a patent must be complete and proper. All aspects of the patenting process are part of the work of a patent paralegal. They practice in parallel with patent attorneys and patent agents and participate in all steps of the patent application process.

The patent application process is laborious and requires meticulous attention to detail as well as an advanced understanding of the application and prosecution processes. The prosecution of a patent application can potentially take a couple years even if each step of the operation is done correctly. Having an extra set of eyes to proofread all of the necessary documents can prove to be extremely beneficial for both the patent practitioner and the inventor in saving time and money.

A good patent paralegal will have read the patent application numerous times, double and triple checking details, finding and perfecting indispensable sentences to allow for a clearer and more concise application. Any mistakes found before a patent application is submitted save the patent practitioner and client time and money by preventing the need to respond to an office action. A small error can take weeks to be corrected if not found before submitting to the patent office.

How the Paralegal Assists in the 5 Steps to Patent

The patent-paralegal offers assistance to a patent practitioner every step of the patent application process. Carson Patents has 5 steps to patent in seeking patent protection for an invention.

During the first step, the prior art search, a paralegal will assist the patent practitioner with the research of the invention. Reviewing the results of the patent attorney’s search and verifying the scope of the invention can save time and money later. When possible, two people performing the research broadens the range of what can be covered during the prior art search, especially when they work together.

Participating in the Patentability Determination

During the second step, the patentability determination, the paralegal and practitioner meet and discuss the results of the prior art search. This discussion will end with the conclusion of whether they believe an invention will be granted a patent or not. If this conclusion is that the invention is patentable, they will proceed to the next step.

Drafting the Patent Application Parts & Forms

In the third step, patent writing, it is likely that a paralegal will complete a majority of the drafting of the patent application. For this reason, patent paralegals must have an advanced understanding of what a patent application should look like. The USPTO is extremely strict when it comes to these applications, and anything incorrect will cause a minimum of some months delay in the prosecution of a patent.

Get Patent Pending – Filing the Patent Application

A patent paralegal must be registered with the USPTO through their patent practitioner in order to complete the fourth step: patent filing. Once registered, they will be able to log in and directly file the patent applications into the USPTO. Filing applications includes paying the filing fees and getting the filing receipt (proof of patent pending) to the inventor or applicant.

Patent Prosecution – Communicating with the Patent Office

The fifth and final step of the patent application process is patent prosecution, a step patent paralegals definitely take part in. Patent prosecution includes managing communication with the patent office (USPTO and WIPO), filing petitions, and responding to office actions. Office actions are official letters sent by the USPTO, usually the examiner, containing any issues with a patent application or the invention at hand itself. There are more than one type of office action, and there are differences in how you address each kind.

In order to continue with the prosecution of a patent application, office actions must be resolved with a complete and proper office action response, which is a correction of each and every thing the examiner pointed out in the application. Read more about each of the five steps to patent: [1] prior art search; [2] patentability study; [3] patent writing; [4] patent filing; and [5] patent prosecution.

Not only do patent paralegals assist with each step of the patent application process, they may also complete administrative tasks. Organization is an important skill a paralegal should possess. In a time where most documents are now electronic, a filing system where both the patent paralegal and practitioner can easily reach and reference a client’s file is necessary.

A patent paralegal is likely the point of communication between the patent practitioner and the inventor/client. This communication is what enables a smooth patent application process. Notifying the client of any updates of the work as well as communications from the USPTO allows for an efficient operation.

Can a Patent Paralegal be Called into Court About the Content of a Patent Application?

Yes, a patent paralegal can be summoned to appear in court regarding a patent application or the steps taken in the prosecution process. It is rare, and only potentially likely in remote circumstances, but the patent paralegal can be called into court just like the patent attorney or agent can. This kind of work is highly detail intensive and fraught with potential for error. It requires a special person with specialized training and education.

How to Become a Paralegal in the Field of Intellectual Property

Being an intellectual property paralegal requires two kinds of specialized education, experience and/or training: first, to become a paralegal, and second, the specialized education, experience and/or training needed to practice in intellectual property (patents, trademarks, and copyrights).

There are multiple paths possible for becoming a paralegal. One way to become a paralegal is to obtain a bachelor’s degree in paralegal studies. This option, however, is not always possible, because not all colleges offer a four-year paralegal studies program. Another option is to obtain a two-year associate’s degree in a paralegal program.

Post-baccalaureate paralegal certificate programs are also available for those who have already obtained a four-year bachelor’s degree in a different career field. These paralegal certificate programs teach the necessities of the practice of law. Further training on patent, trademark, trade secret, copyright, and infringement is likely needed for an intellectual property or patent paralegal.

Taking the step from paralegal to intellectual property paralegal for trademarks and copyrights or to patent paralegal requires additional education, experience, or training programs the contain classes that specialize in the patent process, trademarks, and intellectual property law. Before enrolling in any course, it is recommended to ensure the program is certified and/or approved by the American Bar Association and/or the USPTO. There are at least two organizations that can certify paralegals: the National Association of Legal Assistants, and the National Federation of Paralegal Associations.

Because intellectual property is such a specialized field of law, experience is what sets each patent paralegal apart from the rest. Interning at an intellectual property law or patent law firm is a great way to gain experience.