The Role of Australian Patent Attorneys

Australian patent attorneys overview

An Australian patent attorney is a person who represents a patent applicant or patent owner before IP Australia and other bodies and is specially qualified to do so. Australian patent attorneys can help clients file, prosecute (e.g. handle the patent examination process) and maintain patent applications as well as act for clients in patent oppositions and provide patent validity and infringement advice.

Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys. The Professional Standard Board publishes a Code of Conduct and administers the disciplinary regime for the all patent attorneys in Australia.

Some Australian patent attorneys are fellows or ordinary members of the Institute of Patent & Trade Mark Attorneys of Australia, the professional body governing the patent attorney profession in Australia.

Patent attorneys have a right of privilege in their communication with clients in respect of intellectual property matters.

Australian patent attorney qualifications

Patent attorneys generally must have both an engineering or science degree and have completed a group of topics prescribed by the Professional Standards Board. This group of topics may take the form of a Masters degree, such as the Master of Industrial Property offered by the University of Technology, Sydney.

Scope of activities performed by Australian patent attorneys

The Institute of Patent & Trade Mark Attorneys website provides a good summary of what activities patent attorneys can carry out:

  • Advise on intellectual property (IP), and help IP owners register and maintain their property
  • Apply for and secure patents, registered trademarks, registered designs and plant variety types in Australia and overseas
  • Help transfer technology by licensing and other processes
  • Conduct IP audits of organisations and products
  • Determine whether a development is new and sufficiently inventive 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 patent process
  • Australian patent attorneys also help clients manage their IP portfolios, advise on patents and registrations held by others and advise on patent infringement and validity