The Role of Patent Attorneys

As of 1 January 2008, there are 420 practising patent attorneys in Australia, all holding scientific and engineering qualifications. They range from sole practitioners to those working in larger practices.

Patent attorneys are qualified and trained in laws relating to patents, trade marks and designs, and understand laws relating to copyright, trade practices, circuit layouts, plant breeders’ rights and confidential information.

They also have the right of privilege in their communication with clients on intellectual property matters.

Most registered patent attorneys are IPTA Fellows or Ordinary Members, and most are based in capital cities - Canberra, Sydney, Melbourne, Brisbane, Adelaide and Perth. Some have country offices or travel to the country.

Australia’s patent attorneys are registered to practice under Federal law and are subject to the disciplinary control of a Tribunal established by Federal Regulations.

Patent attorneys can:

• Advise on intellectual property (IP), and help IP owners register and maintain their property
• Apply for and secure patents, registered trademarks, industrial designs and plant variety types in Australia and overseas
• Help transfer technology by licensing and other processes
• Conduct IP audits of organisations and products
• Conduct litigation in Australia and overseas
• Determine whether a development is new and sufficiently inventive enough to justify a patent
• Determine the nature and ambit of inventions and prepare patent specifications
• Lodge documents with the Patent Office, and guide applications through the process
• They also help clients manage their IP portfolios, advise on patents and registrations held by others, and advise on whether developments infringe or might infringe rights held by others.

All Australian patent attorneys have international networks of associates and can advise clients on filing foreign patents, trade marks and design applications. Most will also service overseas clients.

As demand for patent attorneys rises, a small number of professional assistants are employed every year. Some may have been working as examiners in the Patent Office.

Typically, 10-20 professional assistants complete the patent attorney registration examinations each year, and are registered to practise as patent attorneys in Australia.

Most national governments grant patents to invention owners, providing an exclusive right of limited duration to prevent unauthorised use. Most also register trade marks without term limits (but subject to renewal). Original industrial designs are also given an exclusive right for a set period 

In most countries, the national Patent Office is responsible for granting these registrations.

Requirements to Register as a Patent Attorney

Under the Commonwealth Patents Act 1990, a person wishing to practise as a patent attorney in Australia must be registered under section 198 of the Act. Registration entitles the person to call themselves a 'patent attorney', and allows the person to enjoy the right of professional privilege (without which clients' rights might be adversely affected).

In order to become a registered patent attorney, the applicant must have a degree, diploma or post graduate qualification in a field of potentially patentable subject matter, have passed (or been exempted from) examinations (in nine prescribed subject groups) or have passed as accredited course of study that satisfies the requirements for registration, be an ordinary resident of Australia, and have worked with a registered patent attorney or been employed in a company practicing patent matters on behalf of the company or been an examiner of patents for at least one year.

Intending candidates may ascertain whether their technical qualifications meet the requirements of the Regulations, by making an application to the Professional Standards Board for Patent and Trade Marks Attorneys.

Click here to see Prescribed Subject Groups you require.

The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) is the peak professional body representing Australian patent and trade mark attorneys.
Phone Australia: 03 9819 2004. Email: mail@ipta.org.au

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The role of patent attorneys and lawyers in Australia

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