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What does a Patent Attorney do?

We’re occasionally asked what patent attorneys actually do. So, here goes:

A patent attorney can:

1. Research the novelty of your invention

An invention can only be patented if it is novel. This means that the invention must not have been disclosed anywhere in the world, either through use or publication. Before seeking patent protection it is, therefore, prudent to search for any pre-existing published documents that disclose your invention, or similar inventions. This includes publicly available academic, commercial and patent literature.

A patent attorney can carry out patent searches for you and help you evaluate the results.

2. Carry out freedom to operate searches

Before exploiting your invention commercially, it is also important to carry out patent searches to see if there are any existing granted or pending patents could restrict your freedom to do so. For example, a competitor may have obtained a granted patent in Australia (or have an application pending) that could stop you exploiting the whole or a part of your invention. Patents are territorial in scope so searches should, ideally, be done in each jurisdiction where you want to exploit your invention.

A patent attorney can carry out patent searches for you to identify any potentially problematic patent filings and help you to understand their relevance and scope.

3. Prepare and file a patent application for your invention

Drafting a patent specification that correctly protects your invention is a difficult skill and takes many years of study and practice to master.

4. Prosecute your patent application

Once filed, a patent application must successfully pass the examination and opposition phases of the application process before proceeding to grant. Ushering a patent application through these phases is referred to as patent ‘prosecution’. If any issues are encountered during the prosecution of your patent application, a patent attorney can assist you to overcome them.

5. Oppose a patent application

If a competitor has filed a patent application and you do not consider that they are entitled to patent protection for the invention, you can oppose their application in an effort to stop it proceeding to grant. The patent opposition process is complicated and a patent attorney can advise you and act on your behalf in an opposition.

6. Manage your patent

In most jurisdictions, fees must be periodically paid to government patent offices to keep granted and pending patents in force. Strict payment deadlines apply which, if missed, can lead to loss of rights, sometimes permanently. A patent attorney can track and monitor these deadlines for you and ensure that the relevant fees are paid in a timely manner.

7. Monitor patent applications

A patent attorney can monitor the patenting activities of your competitors. This includes tracking the progress of any specific patent applications that they have pending or monitoring their patent filing activities generally.

8. Assert a patent against an infringer

If a company or person infringes your granted patent, a patent attorney can prepare and send a letter of demand on your behalf to the infringer to enforce your rights.

9. Defend infringement allegations

If a patent owner alleges that you are infringing their patent, a patent attorney can help you to defend the allegations. For example, there may be reasons why your product or process does not infringe their patent and/or you may be aware of prior art that renders their patent invalid.


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