What Does a Biotech Patent Attorney Do?

A biotech patent attorney assists with the preparation of patent applications related to innovations in biotechnology, such as new medical devices or engineered organisms. This includes packaging materials for examination and working on appeals if an application is rejected by the government agency responsible for patent investigations. In addition, a biotech patent attorney can help a company enforce its intellectual property rights and negotiate contracts where such rights are leased for specific business purposes. A pharmaceutical company, for example, might want access to engineered mice for testing a specific medication.

The preparation of patent applications can include filing for international rights as well as domestic ones. Biotech patent attorneys work with personnel in the company to describe the nature of the patent and pull together documentation to support the application. This includes proof of originality as well as demonstrations of what the invention is supposed to do. Highly technical language may be involved for some projects, which requires comfort with scientific jargon and industry terminology.

As patent examiners review the information, they can contact the biotech patent attorney with specific questions about the application. As a point of contact, this person ensures that questions are answered appropriately and promptly. In the event the patent is rejected, the attorney develops materials for appeal after looking at the grounds for rejection and deciding how to proceed. For example, the company may need to better document that an invention is truly original in nature.

Once a patent is in force, the biotech patent attorney can make sure it is protected. This includes issuing orders to stop using material without authorization, as well as taking violations to court in the event this becomes necessary. Attorneys can also be involved in negotiations to license rights, whether a company wants to use another firm’s invention or hire out usage rights to a partner company. The legal team develops the terms of the contract and makes sure it is honored by all parties.

Requirements to work as a biotech patent attorney usually include a law degree, an active bar membership, and experience in biotechnology. Some firms want people with advanced degrees in this field to ensure familiarity with the subjects they will cover. Others accept candidates with work experience in the industry and documented familiarity; someone who has been working in the legal department of a pharmaceutical company, for example, clearly understands both the scientific and legal issues.