The role of a Patent Attorney

The Interface of Law & Technology

Patent Attorneys combine technical skills in engineering or science with an expert knowledge of the patent, design and trade mark law. 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. In Australia the patent attorney and legal professions are separate such that patent attorneys may practice before IP Australia but are restricted from practice before a Court, and lawyers are prohibited from drafting and amending patent specifications before IP Australia but may, of course, practice before a Court.

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.

The Trans-Tasman IP Attorneys Board (the Board) is a statutory body established under section 227A of the Patents Act 1990 and constituted under the Patents Regulations 1991. The Board are responsible for administering the regulatory and disciplinary regimes for patent and trade marks attorneys in Australia and New Zealand. Further details on the requirements for registration set out by the  Board are on their website

What does a patent attorney’s work include?

A Patent Attorneys work normally includes:

  • Patent preparation, Lodgement and Prosecution;
  • Enforcement and the Navigation (often referred to as “working around”) of 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.

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What our clients say

As I move into consultancy, I would like to acknowledge your part in assisting WEARX achieve its IP management plan objectives. We moved our portfolio for a large Sydney based Patent Attorney firm in mid-2013 to Caska IP – and I’m pleased to say this has paid off. Your dedicated approach to finding the best way to provide us with appropriate IP protection in challenging market conditions, has helped us achieve commercial security and good management. In summary, your service level and cost base has exceeded our expectations.

Jerry Hoslin, Director & Founder, WearX

I have been involved in business consultancy for over 25 years. This has involved launching new businesses, ideas, products as well as assisting existing businesses to expand. In that time I have experienced many start ups and dealt with a large range of Intellectual Property. Andrew Caska, Principal Patent Attorney of Caska IP, has recently provided his services to one of my clients and we worked closely to formalise important patents and trade marks. His understanding of the invention, his work and timely delivery were all first class and we are very happy with the outcomes.

Grant Harms, Business Consultant,

Caska IP has been more than supportive in protecting Automed Pty Ltd IP for the agricultural and medical industry. In working with IP& we have developed a clear IP strategy for patents and trademarks for our products, for the Australian market and the international market. We are more than happy with their dedication and level of service and would recommend them to any small or large organisation

David Edwards, CEO & Founder, Automed Pty Ltd

As an individual inventor, I set out to find a Patent Attorney service that was accessible and reasonably priced to assist in lodging my first patent application. I found Caska IP to be not only affordable and accessible, but highly professional and attentive to my needs and requirements. Caska IP worked with me to assist in refining my idea and expressing its unique qualities. I highly recommend Caska IP to the individual inventor.

Lester Walters, Inventor, QUAD R&D Pty Ltd

I was relatively unaware of what was needed and admit to being a bit nervous. Your perception and interpretation of what I was trying to achieve gave me great comfort. On receipt of the initial draft I was impressed with the professional presentation and the attention to detail with little alteration being required. You may rest assured that I will be using Caska IP for future projects (of which I have several) after this one is put to bed.

John Plumridge, Inventor
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Patent Attorney Sydney and Newcastle Australia