The role of Patent & Trade Mark attorneys

The Role of Patent Attorneys

Australian patent attorneys all hold tertiary qualifications in scientific and engineering disciplines. They range from sole practitioners to those working in larger practices.Patent attorneys are qualified and trained in laws relating to patents, trade marks and designs, and understand laws relating to copyright, trade practices, circuit layouts, plant breeders’ rights and confidential information.They also have the right of privilege in their communication with clients on intellectual property matters.Most registered patent attorneys are IPTA Fellows or Ordinary Members, and most are based in capital cities – Canberra, Sydney, Melbourne, Brisbane, Adelaide and Perth. Some have country offices or travel to the country.Australia’s patent attorneys are registered to practice under Federal law and are subject to the disciplinary control of a Tribunal established by Federal Regulations.

Patent attorneys can:

  • Advise on intellectual property (IP), and help IP owners register and maintain their property
  • Apply for and secure patents, registered trademarks, industrial designs and plant variety types in Australia and overseas
  • Help transfer technology by licensing and other processes
  • Conduct IP audits of organisations and products
  • Conduct litigation in Australia and overseas
  • Determine whether a development 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
  • Assist clients manage their IP portfolios, advise on patents and registrations held by others, and advise on whether developments infringe or might infringe rights held by others.

All Australian patent attorneys have international networks of associates and can advise clients on filing foreign patents, trade marks and design applications. Most will also service overseas clients.

As demand for patent attorneys rises, a small number of professional assistants are employed every year. Some may have been working as examiners in the Patent Office.

Typically, 10-20 professional assistants complete the patent attorney registration examinations each year, and are registered to practise as patent attorneys in Australia.

Most national governments grant patents to invention owners, providing an exclusive right of limited duration to prevent unauthorised use. Most also register trade marks without term limits (but subject to renewal). Original industrial designs are also given an exclusive right for a set period

In most countries, the national Patent Office is responsible for granting these registrations.

The Role of Trade Marks Attorneys

Australia’s trade marks attorneys are registered to practice under Australian Commonwealth legislation, namely the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth).  They are subject to the disciplinary control of the Trans Tasman IP Attorneys Board.  There is an official Australian Register of Trade Marks Attorneys which can be found by clicking here.

Trade marks attorneys:

  • Generally hold tertiary qualifications and are trained in laws and practice relating to trade marks; and
  • Have some understanding of laws relating to other forms of intellectual property, for example, patents, designs, copyright, trade practices, domain names, circuit layouts, plant breeder’s rights and confidential information.

They can help clients:

  • Apply for and obtain trade mark protection or registration in Australia and overseas;
  • By advising on use and registration of trade marks
  • By assisting in licensing and assignment of trade marks; and
  • By assisting in the enforcement of trade mark rights in Australia and overseas

All registered Australian patent attorneys are qualified for registration as trade marks attorneys, and can apply to join the Register of Trade Marks Attorneys

Australia’s registered trade marks attorneys have the right of privilege in their communication with clients on intellectual property matters.