Do I need a patent attorney?
Key points
- Patent attorneys help businesses secure patent protection for their inventions.
- IP Australia’s filing data indicates that engaging a patent attorney leads to better outcomes.
- Many patent attorneys provide free consultations – take advantage of these to find out where you stand and what it takes to patent protect your invention.
Try before you buy
If you have created something new and you want to protect, license and/or sell it, keep your invention confidential and book a free consultation with a patent attorney.
During your initial consult, a patent attorney can guide you through the patent application process, answer all your patent questions, and advise on whether patent protection suits your commercialisation strategy. Their advice can depend on:
- the nature of your invention;
- how ready you are to hit the market;
- how you plan to turn a profit;
- how different your invention is from what is already known; and
- whether you have publicly disclosed your invention.
Advice may vary
Based on your specific invention and commercialisation strategy, it could be that:
- your invention needs more work, in which case your patent attorney can recommend someone like an industrial designer; or
- a novelty search is required to determine the patentability of your invention; or
- you should establish internationally pending patent rights with a provisional patent application while you finalise your prototype; or
- registered design protection should be considered; or
- you have publicly disclosed your invention and now need to file complete patent applications in target countries where grace periods are available.
Most people are not familiar with the patent application process and speaking with a patent attorney can be eye-opening and prompt you to consider your invention and business strategy from different angles.
High-level guidance + detailed expertise
The above is just an example of the high-level guidance a patent attorney can provide. However, the expertise of a patent attorney does not only cover the big picture. They are also responsible for drafting the detailed and complex patent specification which accompanies your patent applications, including the all-important patent claims which define your invention and ultimately the scope of your monopoly.
The breadth and strength of your protection, and thus how readily third parties can copy your invention, comes down to how well your attorney has drafted your patent specification.
For a discussion of how a patent specification and claims work, check out our IP webinar here (starting at the 32:52 timestamp).
Choose the right attorney
The journey from filing a patent application to securing a granted patent can be a long and rewarding one. Having the right patent attorney in your corner from the start is crucial, especially because their understanding of your invention and the patent specification they draft will have a dramatic ripple effect on your entire patent protection strategy in the years to come.
We have seen clients have their potential patent protection severely compromised because the patent specification drafted by their original attorneys were not up to scratch.
What’s disturbing is that clients often don’t know they have a subpar patent specification until years later during examination before a patent office, and by that time it is usually too late to be able to salvage the situation.
Given such horror stories, we cannot emphasise enough the importance of finding the right patent attorney from the outset. Check out our earlier post for tips on how to find a patent attorney who is right for you and your invention (and it certainly does not have to be us)!
The takeaway
To quote from IP Australia (Australia’s independent government agency that administers IP rights and has no affiliation with any IP firms or patent attorneys:
The patent process from application to grant can often be an uncertain and daunting journey. For first time applicants engaging an attorney can greatly increase the chances of success.
IP Australia has a superb toolkit which has helped many Australians learn more about patent protection and what information to prepare before speaking with a patent attorney – check it out here.
