Role of patent attorneys
Patent attorneys in Australia are registered as Trans-Tasman patent attorneys, and are qualified to practice in Australia and New Zealand. Patent attorneys must hold tertiary qualifications in a technical field (typically biotechnology, chemistry, mechanical engineering, or electrical engineering and information and communication technologies (ICT)). They range from sole practitioners to those working in larger practices to in-house practitioners.
Patent attorneys primarily help their clients to protect, enforce and exploit their inventions and associated rights. Trans-Tasman patent attorneys have the right of privilege in their communication with clients on IP-related matters.
Patent attorneys can:
- Advise on IP matters relating to patents (and in some cases designs and plant breeder’s rights (PBRs)), and help patent owners to register and maintain their IP.
- Apply for and secure patents in Australia, New Zealand and overseas.
- Help transfer patent-related technology by licensing, assignments and other agreements.
- Conduct patent proceedings before IP Australia and IPONZ, and assist with patent litigation in Australia, New Zealand and overseas.
- Determine whether an invention is likely to be eligible for patent protection.
- Determine the nature and ambit of inventions and draft patent specifications.
- Lodge patent-related documents with IP Australia and IPONZ, and guide patent applications through the examination process.
- Assist clients to manage their patent portfolios, advise on patent rights held by others, and advise on whether proposed activities might infringe patent rights held by others.
- Conduct IP audits and due diligence, particularly in relation to patents.
Trans-Tasman patent attorneys typically have international networks of associates and can advise clients on filing foreign patent (and design and PBR) applications.
All registered Trans-Tasman patent attorneys are subject to the disciplinary control of the Trans-Tasman IP Attorneys Board (TTIPAB). The TTIPAB maintains an official Register of Trans-Tasman patent attorneys.
Role of trade marks attorneys
Australian trade marks attorneys generally hold tertiary qualifications and are trained in laws and practice relating to trade marks. Australian trade marks attorneys are registered to practice under Commonwealth legislation. They range from sole practitioners to those working in larger practices to in-house practitioners.
Trade marks attorneys primarily help their clients to protect, enforce and exploit their trade marks and associated rights. Australia’s registered trade marks attorneys have the right of privilege in their communication with clients on IP-related matters.
Trade marks attorneys can:
- Advise on IP matters relating to trade marks, and help trade mark owners to register and maintain their IP.
- Apply for and secure trade marks in Australia and overseas.
- Help transfer trade mark-related technology by licensing, assignments and other agreements.
- Conduct trade mark proceedings before IP Australia, and assist with trade mark litigation in Australia and overseas.
- Determine whether a logo, phrase, image, colour, sound, scent, or the like, is likely to be eligible for trade mark protection.
- Determine the nature and prepare a specification of goods and services.
- Lodge trade mark-related documents with IP Australia, and guide trade mark applications through the examination process.
- Assist clients to manage their trade mark portfolios, advise on trade mark held by others, and advise on whether proposed activities might infringe trade marks held by others.
- Conduct IP audits and due diligence, particularly in relation to trade marks.
All registered Australian trade marks attorneys are subject to the disciplinary control of the Trans-Tasman IP Attorneys Board (TTIPAB). The TTIPAB maintains an official Register of Australian trade marks attorneys.