Patent Attorneys

The article about patent lawyers was interesting, but it failed to identify the major difference among patent lawyers and agents, those in private practice and those in corporate or government practice (C&EN, Nov. 6, 2006, page 56). The article explored differences between the number of men and women in the field, between prosecution of patent applications and litigation, between big firms and small firms, between degree levels in science, and between chemistry and other sciences.

I have had a satisfying 50-year career in patents, beginning in 1956 as a patent examiner just after receiving a bachelor's degree in chemistry. After two years as a law clerk in the predecessor patent court to the U.S. Court of Appeals for the Federal Circuit, I became the first law clerk from the court of appeals to practice in California.

I like private practice because it is invention-driven, insulated from policy decisions of a corporate or government employer. Some enlightened employers give researchers free rein to explore any subject matter, but most have strategic decisions to pursue. In private practice, a lawyer or agent is less likely to have any guidance or direction on where the technology might go and may be freer to focus on the differences over the prior art, rather than where the invention fits into the larger picture contemplated by the employer. Basically, those in private practice-what is called the "free" profession-tend to be more independent, having little concern for corporate strategy or viewpoints. This is not to say that one is better than the other, but simply to say that they are different.

John P. Sutton
San Francisco