What does a patent attorney do?
Key points
- Patent attorneys help businesses secure patent protection for their inventions.
- Registered Australian patent attorneys have science or engineering backgrounds and assist with the protection and commercialisation of innovative technologies.
- Patent attorneys draft, file and prosecute patent applications around the world.
Patent attorneys help inventors secure monopolies
A patent grants an inventor a time-limited monopoly over their invention. This means the inventor has the exclusive right to make, license, sell and otherwise control the commercialisation of their invention, usually for up to 20 years.
Patents provide extremely powerful rights which distort free market forces in the favour of inventors. Governments around the world grant these monopoly rights to inventors to incentivise R&D and technological innovation.
Given the market-distorting effects of patents, granted by governments no less, securing patent protection is not a straightforward task, and this is precisely where the skills and expertise of patent attorneys are required.
Want a patent? Disclose your invention
The patent bargain is this: governments will grant inventors legal monopolies, but in return, inventors must publicly disclose the technological details underpinning their inventions so that, when their patents expire, the general public can make use of the previously-protected technological knowledge.
From the government’s point of view, this is a “one step back, two steps forward” proposition: when a patent is active, the patented technology is usually sold at a premium and the general public pays the price. However, in the long-term, the technology becomes freely available and may not even come to exist in the first place without the incentive of patent protection.
So, where does your patent attorney fit in? A patent attorney’s duties are wide and varied, but a key and specialised service they provide is the careful drafting and amending of patent specifications.
Patent specifications are legal and technical documents that disclose inventions. In filing a patent application, a patent specification must be submitted to fulfil the above public disclosure requirements. Failure to adequately disclose an invention can render a patent invalid, as discussed in our webinar at 39:51.
The patent specification defines your protection
A patent specification is not simply a document that describes the invention. The patent specification also defines the very boundaries of the inventor’s monopoly.
A patent attorney’s real value is in their ability to draft a patent specification which not only protects the inventor’s invention, but also protects against any modifications that third parties might make.
A common myth propagated in patent discussions is that you can avoid infringing a patent by changing the invention a certain amount. This myth is false. Instead, the scope of a patent is defined by the patent specification, and to a large extent, the claims at the end of a patent specification. For a detailed discussion about this myth and how the claims of a patent specification work, see our webinar at 34:52.
Patent attorneys, patent offices and tug of war
A patent attorney’s role is to secure the broadest scope of patent protection for the inventor. In contrast, patent offices are government bodies tasked with ensuring that the patents they grant are no broader than they need to be (the broader a monopoly, the more it distorts the free market and thus the more it can hurt the general public).
In essence, patent attorneys are engaged in a tug of war with patent offices: both parties start at opposite ends of the monopoly / free market spectrum, and gradually, through amendments to the patent specification, legal submissions and patent office examinations, common ground is found.
Generally speaking, the basic rule dictating the tug of war goes like this:
- Patents can only be granted to inventions that are novel and inventive.
- Whether an invention is novel and inventive is determined by comparing it to all knowledge that was publicly available before the filing date of the inventor’s first patent application.
The patent office’s objective is to locate information that was publicly available before the filing date of the inventor’s first patent application to show that their invention is not novel or inventive.
The patent attorney’s objective is to overcome the patent office’s objections by submitting arguments and/or amendments to the patent specification.
If amendments to the claims are required, the patent attorney’s goal is to find the perfect combination and sequence of words that define the invention as broadly as possible, while satisfying the novelty and inventiveness requirements of the patent office.
The takeaway
The above is a simplified description of a small but critical aspect of a patent attorney’s job which is often overlooked or not well understood. That said, patent attorneys also provide both high-level and detailed guidance in the realm of patent and design protection, discussed in our post here.
Beneficially, many Australian patent attorneys provide free initial consultations, so if you have created something new and are keen to protect it, we recommend you book an appointment with a patent attorney to learn more about the patent application process and ask any patent questions you may have. Of course, rest assured that your discussions with a patent attorney are privileged and confidential.
Patent protection can be a complex and long-term endeavour, and the patent attorney you team up with must have your best interests at heart. Check out our guide here to help you find the right patent attorney for your invention and commercial strategy. As a starting point, we recommend finding someone with the right technical background for your invention. From there, it can come down to factors like experience and costs.
