Patent Attorney Combines the Law with Materials Research
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Patent Attorney Combines the Law with Materials Research Jeffrey G. Killian In 2004, 15 years after I first started studying metallurgy and materials science, I entered my first steel mill. I had been visiting Sweden to work with a client in the patent department at Sandvik AB, which is a large multinational industrial conglomerate headquartered in Sweden that, among other things, manufactures specialty steels and cutting tool inserts. As a patent attorney, I refer to materials research every day in my job.* I collaborate weekly, if not daily, with researchers, product managers, and attorneys at companies with respect to the protection and enforcement of their intellectual property that are as varied as the research and products of the company. As a result, the technical variation on a project-by-project basis is large, requiring continuous efforts to understand the materials science of these inventions. In this article, I examine a few of the ways in which materials research plays a role in the daily work of a patent attorney.
Preparing Patent Applications One of my primary responsibilities with respect to the representation of Sandvik AB is the preparation of patent applications. Although patent applications require a highly stylized form of writing, the text is similar to the composition of a scientific journal submission or a presentation accompanying a lecture course or laboratory demonstration, all of which share the common goal of teaching and enabling others to practice the described technology. Typically, the researchers with whom I collaborate provide a disclosure of the invention, including a brief description of the invention and the problem it intends to solve or the improvement it intends to provide, and any relevant figures and/or *The patent bar in the United States is composed of roughly 50,000 individuals who have qualified to represent patent applicants in proceedings in the U.S. Patent and Trademark Office (USPTO). Qualification is predicated on having an appropriate technical background and passing a test on procedures in the USPTO. Suitably qualified technical people can represent patent applicants in the USPTO as patent agents; a law degree is not required for this aspect of a career in patent law. For more information on being registered at the USPTO, see Web site at www.uspto.gov. Patent attorneys have both a USPTO registration and are admitted to the bar in at least one jurisdiction. Patent attorneys can, in addition to representing applicants before the USPTO, represent a party in federal court. 1056
Patent attorney Jeffrey G. Killian (standing) reviews scanning electron microscope results with researcher Åsa Larsson during a recent visit to the research group of Sandvik AB.
test results. The details of the disclosure vary by the type of invention. For example, the information contained in the disclosure for a composition of a new alloy is different from that in the disclosure for a new processing method. Some applications with which I have been involved include composition of alloys s
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