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Can A Patent Attorney Steal My Idea?

A common fear of inventors is having their invention stolen, and inventors are therefore often secretive about their work.

To obtain a patent on an invention, however, the inventor must fully disclose their invention. In most cases, the inventor will brief a patent attorney on the invention, who will prepare and file a patent application on behalf of the inventor at the patent office.

So, one question that we are commonly asked is – what stops the patent attorney from stealing the invention?

Code of Conduct

Patent Attorneys in Australia and New Zealand are bound by the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (the Code of Conduct). A patent attorney’s registration may be suspended or cancelled if a patent attorney is found guilty of professional misconduct.

The Code of Conduct sets a variety of obligations on attorneys, including that the patent attorney must act “in accordance with the law” and “in the best interests of the registered attorney’s clients”.

The code further requires that a patent attorney must not act “in a way that is fraudulent, deceitful or knowingly misleading” (Integrity), must not “use or disclose confidential information obtained from or on behalf of a former, current or prospective client without the consent of the client” (Confidentiality) and “is a fiduciary in respect of the registered attorney’s dealings with a current client, and owes a duty of loyalty to a current client” and “must not prefer the registered attorney’s own interests over the interests of a current client” (Loyalty).

Patents Act

The Patents Act 1990 (Patents Act) also considers ownership in its core and states in s15 that:
a patent for an invention may only be granted to a person who:

  1. is the inventor; or
  2. would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
  3. derives title to the invention from the inventor or a person mentioned in paragraph (b); or
  4. is the legal representative of a deceased person mentioned in paragraphs (a), (b) or (c).

In other words, not just anyone can legally be granted a patent.

But What if?

There are various provisions in the Patents Act to address patent applications being filed by those not entitled to do so. These are more commonly used when an employee files a patent application for an invention developed by a company, without entitlement to do so, but would equally apply should a Patent Attorney file a patent application for one of its client’s inventions.

If the patent application has not yet been granted, an application under s36 of the Patents Act may be filed, where the Commissioner may decide that the patent application proceed in the name of the true inventor.

If the patent application has been allowed, it may be ‘opposed’ under s59 of the Patents Act on the ground that the Patent Attorney does not own the invention.

If the patent has been granted, an application may be filed under s191A to have the register rectified, such that the true inventor becomes the registered owner of the patent.

Practical Issues for Inventors

It is imperative that you are open in your communication with your patent attorney when preparing your patent application. The more information they have (good and bad), the better they can advise you, and the better they can prepare your patent application. Holding back information could impair the result and may even result in problems with your patent application, which otherwise could have been easily avoided.

Ideally, you should initiate communication with your patent attorney at an early stage. Kings provide an initial 30-minute consultation at no cost or obligation, which will help you understand the patent system, and ensure you do not invalidate your patent rights.

Summary

Patent Attorneys in Australia and New Zealand are bound by the Code of Conduct, which requires them to act in accordance with the law, in the best interests of their clients, and with Integrity and Loyalty. Furthermore, Patent Attorneys are bound by confidentiality, even for prospective clients.

If for any reason, a patent application for your invention were filed by someone else (without your consent), there are provisions to regain ownership over that patent application or patent.

Seeing a patent attorney at an early stage will help understand the system and how to best protect your invention.

If you need any help in regards to patents law, contact us today at Kings Patent and Trade Marks Attorneys by booking online or calling us on (07) 3088 8009 for an in-person meeting with one of our expert patent attorneys.

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