Articles > Intellectual Property

What do Patent Attorneys Do?

November 16, 2020   Philip EvangelouRaymond Chbib

Patent attorneys are intellectual property attorneys who are qualified and trained in laws relating to patents, trademarks, design rights, copyright, trade practices and confidential information. Their primary role is to prepare, amend and file patent applications to the Australian Patent Office on behalf of the client. 

Through fulfilling their obligations under the Patents Act 1990, they represent creators in the patent application process and act as litigators to protect their client’s rights to an invention. Within this role, patent attorneys have a duty to protect the rights of their clients, the inventors and their patents. 

Besides being a qualified lawyer, a patent attorney must also hold a degree or other qualification in a field of patentable technology and specialise in intellectual property (IP) law. And most importantly be registered with the Trans-Tasman IP Attorneys Board. 

Why engage in a Patent Attorney?

Indeed, you can file a patent application yourself. However, delegating a patent attorney to carry out the registration process will increase your application’s prospects of success. This is because a patent attorney can; search patent records, draft patent specifications, provide advice on the validity of patents, determine any infringement of patents and offer advice on general IP matters. 

Essentially, a patent attorney will assist you with deciding whether you have a patentable invention and ascertain the commerciality of your invention. Also, they can advise clients on filing foreign patents, trademarks and design applications. Typically, Australian patent attorneys have international networks of associates. Moreover, patent applications require meticulous drafting which patent attorney’s are well-versed in. They have the skills to prepare and argue the validity of patent documents, where the meaning of each word bears weight upon the granting and scope of the patent protection. 

Patent attorneys can generally be trusted with confidential information regarding your IP. There is a right to privilege which arises in any communication between a client and a patent attorney. Thus, a patent attorney can be trusted because under these privilege rights they are not compelled to disclose any discussions or advice given. Note that this privilege belongs to you as the client. 

Be Prepared… 

When engaging a patent attorney to assist with the patent application process, we recommend you have the following documents and information readily on hand:

  • a summary description of the invention; 
  • any photographs or illustrations that explain the functionality of your invention; 
  • your business plan regarding how you want to commercialise your invention;
  • a list of people you have disclosed your invention with; and
  • the original submitted application (if there is one).

Key Takeaway…

In summary, patent attorneys can do the following:

  • Apply for and secure patents, registered trademarks and designs in Australia and overseas
  • Determine whether a invention is new and sufficiently inventive enough to justify a patent
  • Determine the nature and ambit of inventions and prepare patent specifications
  • Lodge documents with the Patent Office, and guide applications through the process
  • Advise on whether your patent application infringes on rights held by others or vice versa
  • Litigate on issues regarding your IP – whether in Australia or overseas 
  • Assist clients manage their IP portfolios
  • Conduct IP audits of organisations and products

If you would like to speak with our IP lawyers, just contact us via 1300 337 997 or by filling out the contact form.

About Philip Evangelou

phillipPhil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.

About Raymond Chbib

raymond chbibRaymond is a legal intern at OpenLegal, working with our legal content team. He is currently a penultimate student at the University of Technology Sydney, studying a Juris Doctor degree with an undergraduate Bachelor of Global Studies. He is particularly interested in Intellectual Property law and the increasing internationalisation of that area of business.