3 questions to help you find the right patent attorney for your business
Key points
Your patent attorney’s engineering or science background should align with your invention.
Patent attorneys aren’t lawyers; they advise exclusively on intellectual property matters.
Ask the three questions at the end of this post to decide if you are working with the right patent attorney.
How patent attorneys add value to innovative businesses
Patent attorneys help businesses protect their technological innovations (inventions). All Australian-registered patent attorneys have an engineering and/or science background to ensure they understand the technology underpinning the inventions they help to protect.
Patent attorneys with electrical or mechanical engineering backgrounds tend to be the most versatile and can help protect inventions across a broad range of technologies, including:
- building and construction
- medical devices and equipment;
- fast-moving consumer goods;
- transport and handling technologies;
- agtech;
- mining technologies;
- mass-produced tools and fittings;
- renewable energy; and
- storage and packaging.
Are patent attorneys lawyers?
The short answer is no. In Australia, patent attorneys do not need a legal background beyond a specialisation in intellectual property law.
Lawyers typically earn a Bachelor of Laws or a Juris Doctor degree and may advise on a range of legal matters, including personal injury, conveyancing, and family law. Unless a patent attorney has similar legal qualifications, they practice exclusively in intellectual property law and help businesses identify, protect, and enforce their IP.
Why invest in intellectual property protection?
"Australian businesses that own any of the three types of IP rights [patents, trade marks and designs], especially those with multiple types of IP rights, are more likely to perform better in terms of profitability (average profit per invested capital or per employee) than businesses that do not own any IP rights."
A 2019 study produced by the European Patent Office and the European Union Intellectual Property Office found that small and medium-sized enterprises that have filed at least one IP application are 21% more likely to experience high growth afterwards, compared with similar firms without an IP application.
Of course, these findings likely indicate correlation rather than causation; IP is about innovation — whether it is a new product, service, brand, or way of doing something — businesses that apply for IP protection tend to be the ones bringing novel ideas to the market so they also tend to be the ones achieving higher growth.
That said, it is hard to argue against the notion that innovation leads to growth. To the extent that your business invests in bringing technological innovations to market, you can reap greater rewards by protecting the underlying intellectual property.
What makes for a good patent attorney?
Patent attorneys help businesses protect their inventions. They do this by preparing patent applications which describe and protect inventions as broadly as possible, relying on their understanding of the underlying technology and patent law.
What a layperson might call the “leg” of a chair, the patent attorney might claim broadly in a patent application as “a downwardly extending support member configured to engage a floor”.
To say that patent attorneys are picky with language would be a gross understatement; they can spend days squabbling over the meaning of a single word when it comes to determining the scope of patent protection.
While linguistic nitpicking might not make for the best dinner party conversation, this acuity for language, combined with a deep understanding of technology is what makes for a masterful patent attorney.
The best patent attorneys not only understand your invention to the point where they can make meaningful contributions to your prototype, they are also armed with an endless arsenal of words, terms and phrases which can be wielded to encompass the ocean or thread a needle, depending on how broadly or precisely your invention needs to be defined.
Last but not least, you want a patent attorney who has the tenacity to debate linguistic and technological differences, no matter how small, because these are the patent attorneys who will secure commercially meaningful patent protection for your business.
If you are lucky enough to work with a patent attorney with the above qualities, hold on tight and rely on their expertise – they can be worth their weight in gold (or royalties and licensing fees)!
Finding the right patent attorney to protect your invention
Many businesses engage patent attorneys simply based on price — this can be risky. The life of a patent can span up to 20 years, and picking the wrong attorney can set you back enormously, financially and otherwise.
Most people don’t buy homes based on price alone – there are many other factors which determine if a house is right for you. The same can be said for patent attorneys. Below are three questions you should ask a patent attorney to determine if they are the right person for the job.
Question 1: What is their technology background?
Your patent attorney’s scientific or engineering background must align with your invention.
In one instance, we saw a hardware-related patent application prepared by a patent attorney with a chemistry background; the resulting scope of patent protection was profoundly limited because of the inadequately drafted patent application.
Question 2: How readily do they overcome patent office objections?
If a patent attorney emphasises fast or high patent grant rates, beware — such a patent attorney is unlikely to be securing broad patent rights for their clients. Getting a patent is one thing, getting a patent with broad and commercially-relevant protection is another.
If a patent attorney wears speedy grant rates as a badge of honour, look beneath the sheen because they may simply be securing very narrow (and often, commercially meaningless) patent rights for their clients.
Question 3: How might others copy my invention?
A well-prepared patent application not only covers one version of your invention, but should also protect the underlying inventive concept. This way, it becomes extremely difficult for others to copy your invention without infringing your patent.
A patent attorney should also consider your invention from the perspective of potential infringers. A good patent attorney constantly asks themselves how an infringer might copy your invention; this way, they can prepare a broad patent application which pre-empts such infringements.
It can take time to investigate the inventive concept underlying an invention, so this third question is best asked after the attorney has sunk their teeth into your invention.
Bonus question: how much time does your patent attorney have for you?
This question is for you to answer. Preparing quality patent applications requires a patent attorney to intimately understand your invention.
The questions your patent attorney asks about your invention may indicate how much time they have to spend with you and how capable they are of thoroughly understanding and describing your invention in a patent specification. This is critical because if the patent specification is inaccurate or incomplete, the resulting scope of your patent may be severely compromised.
Choose the right patent attorney for your business
The patent application process can be a long and complicated journey. It often involves contending with patent offices around the world over why your invention is new and advantageous over existing technologies.
IP Australia acknowledges that “the patent process from application to grant can often be an uncertain and daunting journey” and that “engaging an attorney can greatly increase the chances of success.”
A well-drafted patent can secure you monopoly rights for up to 20 years, but it starts with laying a strong foundation with your first patent application. It is important to work with the right patent attorney from the outset because the foundation they lay disproportionately affects the strength of your patent protection in the years to come.
To learn more about us and whether we are suited to help protect your invention, please feel free to get in touch:
