About patent attorneys
An Australian patent attorney is a professional who, among other things, assists clients obtain patents, registered designs and trade marks.
By law, only an Australian patent attorney can draft patents for clients in Australia. This is because the drafting of patent applications is a highly specialised skill requiring the right combination of legal drafting skills and a deep understanding of technology and science.
A patent attorney understands the patent laws governing patent offices, and their practices, that inventors and solicitors may not be aware of. Consequently, patent attorneys are well prepared to help progress patent applications through the patent offices (“prosecute” your patent applications).
A solicitor or lawyer is neither qualified nor permitted by law to draft patent applications. A patent attorney may work with a solicitor to enforce, sell or licence a client’s patent application as required.
Communication about intellectual property between patent attorneys and their clients is privileged. That is, such communications between a patent attorney and their clients are protected from disclosure under compulsion of court or statute. Of course, a patent attorney will treat all received information in the strictest of confidence.
The role of a patent attorney also includes:
- identifying inventions for protection
- representing clients before a patent office hearing, for example an opposition to the grant of a patent
- providing advice relating to patent infringement and patent validity
- managing patent portfolios
- assisting in the transfer of technology by way of sale or licence of patents
- providing patentability advice
- provide patent-work around solutions
A good patent attorney will take the time to listen to you and understand your commercial requirements and business and make a proposal that is aligned to these.
A patent attorney must abide by a strict standard of ethics. The Professional Standards Board has issued a Code of Conduct for patent attorneys. Patent attorneys that are also Fellows of the Institute of Patent and Trade Mark Attorneys (IPTA) also abide by an IPTA Code of Ethics.
Australian patent attorneys are required to engage in continuing professional education so that they are up to date with the latest developments in patent law in at least Australia and the major patent jurisdictions.
To qualify as an Australian patent attorney, a person must have tertiary qualifications in intellectual property law, and tertiary qualifications in at least one of a science, technology and engineering, and has also spent time as a trainee patent attorney under the supervision of a senior patent attorney. It is generally accepted that it takes years of post registration experience to become competent at patent drafting.
Most recently qualified patent attorneys study intellectual property law courses at a university, for example the Master of Intellectual Property course at The University of Technology of Sydney (UTS). The Professional Standards Board approves the courses.