Do I really need to see a patent attorney?
I have a country solicitor near me that I have been going to for years and I have every confidence in her. She has done everything from drafting our wills to preparing contracts and legal documents for my business. Why can’t I just take my patent application to her? I find big city lawyers intimidating but I feel comfortable talking to her.
Lawyer Answers (1): Answers from lawyers are general preliminary responses. They are not formal legal advice and cannot taken account of all your circumstances. They do not create a lawyer–client relationship.
Answer by LegalEagle™ Staff, Camden 2570 NSW
- Intellectual property and patent applications in particular are a very technical and difficult area of the law.
- It is an offence under the Patents Act for an individual or law firm to carry on the business of a patent attorney. This includes assisting with and preparing patent specifications. This also covers the description of an invention. As a result your local solicitor is not legally allowed to prepare your patent application for you.
- A patent attorney must be registered with the Professional Standards Board for Patents and Trade Marks Attorneys. In order to be registered patent attorneys must:
- have university qualifications in technology or science;
- have passed exams specifically relating to:
- patent, trade mark and designs law and practice in Australia;
- intellectual property law generally; and
- professional conduct;
- have relevant and extensive employment experience; and
- be of good character.
- Your solicitor could assist you with finding a patent attorney who suits your needs and help you to communicate with them until you are comfortable.
- However it is very important for an inventor to work closely with their patent attorney when drafting a patent. Doing this through a third party such as a solicitor can make communication more difficult and will increase your costs.