Chapter 37 - § 37.1 • INTRODUCTION

• Jurisdiction: Colorado

§ 37.1 • INTRODUCTION

Business attorneys play a pivotal role in protecting the patent rights of their clients. For example, a business attorney might work with a start-up client that is forming a new company to implement a new service or product. Or, a business attorney might represent a venture capitalist looking to make an investment in a promising new company. Similarly, a business attorney might work with an existing client looking to roll out a brand new business idea. As a result of such early involvement, business attorneys are well positioned to spot triggering events that will cause the loss of patent rights in the United States or in foreign countries. Moreover, a business attorney can help a client to recognize when he or she has a patentable invention that is entitled to patent protection. Thus, armed with a rudimentary knowledge of patent law, a business attorney can provide a great service to a client by helping the client to recognize that a patentable invention exists and/or by helping the client to recognize when the client is about to trigger a patent-barring event.

From a legal administration perspective, patent examination is performed by the federal government and patent enforcement takes place under federal law. State law applies mostly in the context of ownership of patent rights. The principal statutes governing patents are 35 U.S.C. §§ 1 through 376, but other statutory areas apply as well.¹

For purposes of examining patent applications and maintaining patents, 37 C.F.R. §§ 1.1 through 1.378 set out the administrative regulations that apply generally. The United States Patent and Trademark Office (USPTO) is responsible for examining patent applications. The USPTO has more than 8,000 patent examiners in its examining corps² and is responsible for examining patent applications in thousands of different particularized subject areas. The USPTO receives over 647,000 patent applications per year.³ Federal courts have original jurisdiction for adjudicating issues of patent infringement and patent validity.⁴ However, disputes over patent ownership can be brought in state court.⁵ In addition, the U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction for handling appeals of patent cases from the U.S. district courts.⁶ Thus, an appeal of a patent infringement case from the U.S. District Court for the District of Colorado is brought in the U.S. Court of Appeals for the Federal Circuit rather than in the U.S. Court of...