What is a patent attorney in Australia?
Patent attorneys are qualified and trained in laws relating to intellectual property (IP) such as patent drafting, trade mark registration, registered design protection, and plant breeder’s rights.
Patent attorneys are also familiar with laws relating to copyright, confidential information, and trade practices.
Patent attorneys can:
- Advise on intellectual property (IP), and help IP owners register and maintain their rights
- Prepare patent specifications for client
- Apply for and secure patents, registered designs, and plant variety rights on behalf of client
- If also registered as trade mark attorneys, apply for registered trademark on behalf of client
- Help transfer technology by licensing and other processes
- Conduct IP audits of organisations and products
- Advise on patentability of technology that has been developed
- Assist clients to manage their IP portfolios.
- Conduct searches of IP rights held by others.
- Advise on whether developments or commercial activity infringe or might infringe rights held by others
What is the difference between a patent attorney and a patent lawyer in Australia?
At IP Flourish, we are sometimes referred to as a ‘Patent Law Firm’ or ‘Patent Lawyer’. This is a common misconception because technically speaking we are not lawyers. We are specifically registered as a patent and trade mark attorney firm, and the relevant job titles are ‘Patent Attorney’ and ‘Trade Mark Attorney’ – We try to steer clear of being titled ‘Patent Lawyers’ as much as possible.
A patent attorney has a focus on understanding the technical and commercial elements of:
- inventions and patent drafting
- filing and prosecuting patent applications
- giving opinions on inventorship, ownership, patentability, infringement and freedom to operate for financial gain.
A trade mark attorney has similar expertise in relation to the filing and prosecution of trademarks.
Australian lawyers may focus on legal issues in a variety of areas, including commercial law, employment law, and family law. A lawyer’s role may involve the use of court actions for enforcing or resolving legal disputes. Patent attorneys do not themselves litigate in court, although they are commonly involved in court proceedings involving IP rights.
Can a patent attorney steal your idea or invention?
Registered patent attorneys are obligated to act in their client’s best interests and to preserve the confidentiality of client information. Misuse of information provided to a patent attorney by a client or prospective client is grounds for removal from the register.
Accordingly, details of an invention can be disclosed to a registered Australian patent attorney knowing that there is a strict obligation for the attorney not to misuse this information, including by ‘stealing ideas’. It is also relevant to note that professional privilege protects communications between Australian patent attorneys and their clients.
What is a patent?
A patent is a form of intellectual property providing a legally enforceable right in relation to commercial use of an invention.
Among the requirements for patent protection of an invention is that:
- The invention is new (‘novel’)
- The invention is non-obvious (involves ‘inventive step’)
Notably, if you have demonstrated, sold, or discussed your invention outside of strict confidentiality prior to submitting a patent application, this can jeopardise your ability to obtain patent protection.
A granted patent provides you with exclusive commercial rights to your invention that can be enforced against other parties in court, if necessary. A patent also provides options for licencing or assigning rights to your invention to other parties.
Who should apply for the patent?
To be eligible for a patent, the applicant (or applicants) should be:
- the inventor(s)
- the person who has legally obtained rights to the invention from the inventor(s)
- the employer of the inventor(s), where the invention was developed in the course of normal employment duties.
An address for legal service will need to be provided for a patent application. Notably, patent attorneys are registered in a jurisdiction-specific manner; e.g. an Australian registration is required for an attorney to act before the Australian patent office.
Are patents / patent attorneys worth the money?
A patent attorney will do a far better job of drafting a patent specification an applying for a patent than you could hope to do yourself. Due to the complexity and specific nature of patent law, it is very common for critical errors to be made when non-attorneys attempt to ‘self-draft’ and/or ‘self-file’ patent applications.
A granted patent provides you with exclusive rights in relation to the commercial use of your invention. This can allow you to prevent competitors from selling your technology leading to higher pricing and/or sales volume. For commercially successful technologies, the costs of patent protection can be very small relative to the commercial benefit provided. Additionally, having a patent application filed can provide substantial advantages for negotiations with investors or commercial partners.
Accordingly, there are very real commercial benefits associated with obtaining assistance and expert advice from a registered patent attorney. While it may be tempting to try to handle patent protection alone to minimise expense, this can ultimately be an extremely costly mistake.
Is IP Flourish local to Brisbane QLD?
Yes, we operate in Brisbane QLD and on the Gold Coast QLD with offices in both locations – Please contact us to arrange an appointment.