The role of a Patent Attorney

The Interface of Law & Technology

Patent Attorneys combine technical skills in engineering or science with an expert knowledge of the patent, design and trade mark law. A patent attorney provides representation and advice regarding patenting and related intellectual property matters, such as preparing and filing patent applications for inventions, representation in matters before the Patent Office, patent oppositions and advising in relation to infringement. In Australia the patent attorney and legal professions are separate such that patent attorneys may practice before IP Australia but are restricted from practice before a Court, and lawyers are prohibited from drafting and amending patent specifications before IP Australia but may, of course, practice before a Court.

How do you become an Patent attorney?

In order to become a registered patent attorney in Australia, you must first have a tertiary qualification in a scientific or engineering discipline. You then need to completed an accredited course of study that satisfies the requirements of registration, be an ordinary resident of Australia, and have worked in the profession, typically under the supervision of a registered patent attorney, for at least two years.

The most common way to become a patent attorney is to become employed by a firm of patent attorneys as a Trainee Attorney or Technical Assistant (or TA) while studying to pass required examinations. TAs typically work directly with qualified attorneys taking an increased responsibility with clients under supervision, receiving training in patent attorney practice and keeping their skills up to date through constant exposure to the latest developments in technology.

The Trans-Tasman IP Attorneys Board (the Board) is a statutory body established under section 227A of the Patents Act 1990 and constituted under the Patents Regulations 1991. The Board are responsible for administering the regulatory and disciplinary regimes for patent and trade marks attorneys in Australia and New Zealand. Further details on the requirements for registration set out by the  Board are on their website https://www.ttipattorney.gov.au.

What does a patent attorney’s work include?

A Patent Attorneys work normally includes:

  • Patent preparation, Lodgement and Prosecution;
  • Enforcement and the Navigation of (often referred to the “working around”) Patent Rights; and
  • Commercialisation – a patent attorney may be involved in negotiating with third parties to secure royalty and license fees.

Other general services a patent attorney would normally provide include advice to clients on the management of their intellectual property portfolio, or advice as to the validity of patents or registrations held by others. These skills arise through familiarity with administrative practices and relevant laws. On an international level, patent attorneys operate within an extensive network of associates in other countries, and have extensive experience in advising clients in filing overseas.

Need a Patent Attorney?

Contact IP& to learn how our Patent & Trade Mark Attorneys can assist you.