How to choose an attorney
Finding the right attorney in Australia may depend on many factors, including:
- The type of intellectual property (IP).
- The technology or industry.
- The extent and scope of protection required.
- Your budget.
- Location and availability of the attorney.
- Personal recommendations.
Australian patent and/or trade mark attorneys may practice as sole practitioners, or work in small, medium or large firms – some associated with law firms.
The following checklist may provide a useful starting point to determine whether a patent attorney or firm best suits your needs.
Checklist
Are they registered as a Trans-Tasman patent attorney or an Australian trade marks attorney, and when were they registered?
The Australian Federal Government administers the registration of patent and trade marks attorneys through the Trans-Tasman IP Attorneys Board. Australian patent or trade marks attorneys must meet this Board’s stringent criteria.
Does the patent or trade marks attorney belong to the Institute of Patent and Trade Mark Attorneys of Australia (IPTA)?
IPTA represents patent and trade marks attorney professionals in Australia and was established to promote improvements in laws and regulations relating to patents, trade marks, designs and plant breeder’s rights.
IPTA members must abide by the Institute’s Code of Conduct set out in a series of By-Laws and its Code of Ethics.
What are the patent attorney’s technical qualifications?
Registered Trans-Tasman patent attorneys must hold a university degree or diploma in a field of technology that contains potentially patentable subject matter.
You should assess the relevance of an attorney’s technical qualification to the field of your invention.
In which areas of technology does the patent or trade marks attorney normally practice, and what is the attorney’s experience in those areas?
This will help you determine whether a patent or trade marks attorney is technically qualified and experienced in your technology.
Patent or trade marks attorneys often become knowledgeable in certain technical areas that might be considered outside their educational background, especially where they’ve had many years of experience filing and prosecuting patent applications in that area.
If you don’t think an attorney is suitable, seek a recommendation for one more suitably qualified and experienced attorneys.
What steps are involved and what is the likely timeframe for completing the work required?
It’s important an attorney explains – and you understand – each step involved in securing protection for your IP, and the time needed to complete a given matter. However, it is important to be aware that obtaining enforceable patent protection in some countries can take years and considerable investment.
How do patent or trade mark attorneys normally charge for services, and what will the work cost?
You should understand all charging practices of your selected patent or trade marks attorney. Some tasks will be billed at an attorney’s hourly charge-out rate. Other services may be charged at pre-determined rates.
As costs can be incurred along the way, some attorneys ask for payment in advance. Others may offer payment terms.
You should also know how much each step of the process is likely to cost. In some cases, it may be difficult for your patent attorney to quote, as time taken and the work’s complexity can vary.
It’s important you provide full and frank information about your invention and commercial plans, and understand it can be difficult to predict total charges many months ahead of work being done.
Your patent or trade mark attorney may also need to engage agents overseas (usually another firm of attorneys) if you want foreign IP protection. Foreign agents’ charges can be significant, and subject to exchange rate fluctuations, official fee changes and changes in those agents’ charges.
Always assess the appropriateness of pursuing foreign IP protection well ahead of due dates provided by your patent or trade mark attorney. And always instruct your attorney as early as possible, as working close to deadlines can also lead to extra charges.
Does your patent or trade marks attorney have a “Letter of Engagement”?
While not essential, a letter of engagement helps explain your responsibilities and rights once you have engaged a patent attorney.
Does the patent or trade marks attorney have professional indemnity (PI) insurance?
Many attorneys have PI insurance to cover their practice and their clients for losses or damages caused by an attorney error or failure by the attorney to exercise the required level of skill. PI insurance may even cover an attorney held to be liable for a mistake even though there was no negligence involved.
