Sydney: (02) 8015-5624 / Newcastle: (02) 4910-4052
mail@caskaip.com.au

What is a Patent Attorney?

A patent attorney typically has a technical background in science or engineering and a further specialist qualification in patent and trade mark law.

Patent Attorneys combine technical skills in engineering or science with an expert knowledge of the patent and trade mark system to protect and enforce patent, design and trade mark rights for clients’ inventions, trade marks and designs. In Australia the patent attorney and legal professions are separate. A patent attorney provides representation and advice regarding patenting and related intellectual property matters, such as preparing and filing patent applications for inventions, representation in matters before the Patent Office, patent oppositions and advising in relation to infringement.

At Caska IP, our patent attorneys are experts in their technology fields and committed to providing the highest level of professional service.

How do you become an Patent attorney?

In order to become a registered patent attorney in Australia, you must first have a tertiary qualification in a scientific or engineering discipline. You then need to completed an accredited course of study that satisfies the requirements of registration, be an ordinary resident of Australia, and have worked in the profession, typically under the supervision of a registered patent attorney, for at least two years.

The most common way to become a patent attorney is to become employed by a firm of patent attorneys as a Trainee Attorney or Technical Assistant (or TA) while studying to pass required examinations. TAs typically work directly with qualified attorneys taking an increased responsibility with clients under supervision, receiving training in patent attorney practice and keeping their skills up to date through constant exposure to the latest developments in technology. Further details on the requirements for registration set out by the Professional Standards Board are on their website (www.psb.gov.au)

What does a patent attorney’s work include?

A Patent Attorneys work normally includes:

  • Patent preparation, Lodgement and Prosecution;
  • Enforcement and the Navigation of (often referred to the “working around”) Patent Rights; and
  • Commercialisation – a patent attorney may be involved in negotiating with third parties to secure royalty and license fees.

Other general services a patent attorney would normally provide include advice to clients on the management of their intellectual property portfolio, or advice as to the validity of patents or registrations held by others. These skills arise through familiarity with administrative practices and relevant laws. On an international level, patent attorneys operate within an extensive network of associates in other countries, and have extensive experience in advising clients in filing overseas.

Need a Patent Attorney?

Contact Caska IP Patent Attorneys to learn how our Patent & Trade Mark Attorneys can assist you.