Patent attorneys are different from the ordinary solicitor. Often, they have legal training and the technical skills of a scientist or engineer. Patent attorneys must be registered with The Trans-Tasman IP Attorneys Board. They must also fulfill their obligations under the Patents Act 1990 (Cth). To be registered with the Board, a patent attorney must hold a degree or other qualification in a field of patentable technology and specialise in intellectual property (IP) law. This article explains what a patent attorney is and how they can assist you with the patent application process.

What Can a Patent Attorney Do?

It is the role of a patent attorney to prepare, amend and file patent applications to the Australian Patent Office on your behalf. You may embark upon the patent registration process yourself. However, engaging a patent attorney sooner rather than later increases your chances of success.

As well as managing the patent application process, patent attorneys also:

  • search patent records;
  • draft patent specifications;
  • provide advice on the interpretation, validity and infringement of patents; and
  • offer advice on general IP matters.

However, a patent attorney cannot represent you in court unless they have been admitted to the relevant Supreme Court in your state.

What to Expect When Engaging a Patent Attorney

A patent attorney will help you determine whether you have a patentable invention, and ascertain the commerciality of your invention. They may also discuss other matters such as:

  • whether a standard or innovative patent is more appropriate;
  • the timing of your application; and
  • which countries you should seek international patents with, if applicable.

Patent attorneys understand the importance of protecting your invention, which is why engaging a patent attorney is a secure and confidential process. Patent attorney privilege protects any communication, record or document made for the dominant purpose of providing IP advice, including patent registration. 

It is important to remember that you should keep your invention a secret before engaging a patent attorney. There is the risk of others copying your invention if you have displayed it in public or published it on social media. This is especially the case where your invention is not yet registered and protected by a patent. If you are disclosing your invention to potential investors, you should consider entering into a non-disclosure agreement. This prevents potential investors from using, copying and speaking to others about your invention.

What You Need if You Are Engaging a Patent Attorney

If you are engaging a patent attorney, you should have the following documents and information readily available:

  • Description: A written summary of the invention, how it works, the problem it solves and how it is unique.
  • Information drawings and sketches: Any photographs, drawings, sketches, illustrations and graphics that explain the functionality of your invention. Models or working prototypes will also help the attorney understand your product. If you are not yet up to this stage of development, a patent attorney can assist you.
  • Patent searches: If requested, a patent attorney can conduct a patent search for you. However, it is best to perform your own searches first to ensure that no similar technology or product exists. Prepare a schedule of your searches and results for your patent attorney to review. There are many free patent databases you can use, including Lens, Google Patents, Google Scholar and AusPat.
  • List of people you have shared your invention with: Prior disclosure may affect the success of your patent application. This is why you should keep a record of every person and company you have discussed your invention with. You should also note the date of disclosure, as well as the specifics of what was disclosed.
  • Your business plan: You should have a well-established business plan. If not, you should at least have a preliminary idea as to how you want to commercialise your invention. This will help your patent attorney in choosing the right patent and devising a patent strategy.
  • Copies of any provisional patent applications: If you have previously lodged a provisional patent before consulting with a patent attorney and now want to convert it into a standard patent, you should bring your original application. You only have 12 months to convert your provisional patent into a standard patent.

Key takeaways

You should engage a patent attorney to prepare, lodge and monitor your patent application to ensure its success. Although patent attorneys can conduct research on your behalf, it is important to undertake your own preliminary research. That way, you can determine whether your invention is worth pursuing. If you need help preparing a patent application, contact LegalVision’s patent lawyers on 1300 544 755 or fill out the form on this page.

Nessim Malak
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