What is a Patent Attorney?
Let’s all be clear, the term “attorney” is confusing. It’s the American term for a lawyer. However, an Australian patent attorney is actually not a lawyer.*
What we have in common with lawyers
We provide legal services and we have a law degree. Yet, we are not admitted to represent our clients in court or advise on litigious matters. For this, we will need to work together with a lawyer, such as a solicitor or a barrister.
Science or engineering degree
This may surprise you: we all have a science or engineering degree. In fact, I did a master’s degree in science in Germany and wrote a master thesis in medical physics.
The background for this is that we must be able to understand our clients who are usually developers and researchers in a highly technical field.
As a consequence of this, each patent attorney has specific fields of expertise in which they can operate. Because of my background in physics, I operate in a broad range of technical fields. These include computer and software, construction and mining, renewable energy, and medtech.
To become a patent attorney, we then work as trainee patent attorneys and study intellectual property law. Only after finishing our law degree and having several years of training under our belt, we register as patent attorneys. If you would like to learn more about this process or even become a patent attorney yourself, have a look at the website of our governing body here.
What we do
Patent attorneys are trained over several years in all aspects around the protection of IP. Our main skill is to understand how your invention works and to translate this into a legal document. This document sets out the scope of your protection. Hence, it is the heart of your IP protection and it is important to get it right at the outset.
We then file your application with the Australian Patent Office and advise on protecting it in overseas markets. We also give advice in IP strategy and get involved in the commercialisation of your patent. For example, a few years ago I wrote a patent document for a university for an innovative appliance. A global appliance company has now licenced the patent and will release the product very soon.
For more general information on patents, please click here.
*very few patent attorneys are qualified as lawyers as well