NewtonianAlch said:
Is it possible to give us an example of something you might encounter on a day-to-day basis? I know there is possibly a privacy issue, so just anything that is as general as possible, so...
1) What kind of technical skills would you mainly employ?
2) How do you even begin to start analysing systems which you've never seen or encountered before?
3) As for electrical engineering, what kind of majoring stream is particularly suited to this role, signals, electronics, telecomm, photonics?
Well today I received an "Office Action" from the USPTO. This Office Action is correspondence rejecting the patent claims over prior patents. I need to take a look at the prior art patents and either argue that the Examiner's rejection is improper or amend the patent claims to distinguish the prior art. Amending the claims is somewhat of a game. You need to distinguish the prior art but you do not want the patent claims to be so narrow that they are difficult to enforce/easy to get around. Before I can really get into this work, however, I need to do a brief analysis first, report the Office Action out to the client and wait for their feedback.
A second project I have for the day is to get a patent illustrator working on drawings for a new patent application. I need to send him the production drawings and brief illustration of what I think we need to disclose the invention and patentable aspects. After that, I will likely begin drafting the patent application (background of the invention, summary, brief description of the drawings, detailed description, and claims).
Currently, I'm also working on some trademark litigation. We're in the discovery stage of litigation and I'm assisting with that process. Last week I attended depositions and helped prepare our client to best answer the questions we anticipated he would be asked.
In response to your questions,
1) You have to be able to understand that technology you are trying to patent as well as to understand prior art patents, which will be used in evaluating your application. The technical knowledge I use can also be as simple as knowing what to name various parts or scientific concepts. Your technical knowledge serves as a foundation for understanding new inventions and old. It also provides a basis for understanding what's out there already so you can draft patent claims that will not automatically be rejected as being too broad.
2) It often helps to have the inventor sit and walk you through it. Sometimes they will also provide a technical disclosure explaining how it works and what the novel features are. If you are asked to understand the prior art patents or known products/processes, it also helps to have your client briefly explain it to you as they are the experts in their respective technologies.
3) Since I don't work in the EE field, I can't say. I would expect that all of the mentioned focus areas would be desired. It really comes down to this - if it is advancing technology, the marketplace will need people to understand it and patent those new advances.