Protecting your intellectual property is one of the most important things you can do for your business. Patents, trade marks and designs hold immense commercial value that can be licenced, sold, or exploited, just like physical property. If you want to obtain, protect and enforce intellectual property rights, it is crucial to work with the right team of experts.
Intellectual Property (IP) lawyers and patent attorneys are two of the most common industry professionals working to foster your intellectual property. There is some confusion over the roles and responsibilities of each, so in this article we’ll go over the difference between a patent attorney and IP lawyer.
What Is a Patent Attorney?
A patent attorney is a legal representative that specialises in patent law, drafting, filing and prosecuting patents. Patent attorneys are the only professionals expressly qualified to prepare a patent specification. A patent specification is a document that sets out the nature of the invention and the bounds of the invention to be protected. In Australia, patent attorneys are required to hold a Bachelor, Master or PhD level degree in the sciences. This ensures that patent attorneys have a full understanding of their clients’ inventions and can provide meaningful insights during the patent drafting and prosecution process.
In addition to holding a degree in the sciences, Australian patent attorneys need to complete a Master of Intellectual Property (MIP). The MIP includes study on the laws associated with patents, trade marks, designs and their legal processes. It is also necessary to complete two years of on the job training under the supervision of an experienced patent attorney in order to apply for registration to the Trans-Tasman IP Attorneys Board. While not a requirement for registration, many of the team at Kings also hold traditional legal qualifications and have spent time practising as lawyers.
What Is an IP Lawyer?
An IP lawyer is a legal professional that specialises in issues related to intellectual property. This includes matters such as patents, trade marks, licensing, registered designs and copyright.
In Australia, an IP lawyer is required to hold a legal degree and practising certificate to offer legal advice to clients. An IP lawyer can offer counsel and representation for a range of intellectual property matters. Their work includes:
- Providing advice about intellectual property matters
- Providing advice about IP documents such as patents
- Creating, reviewing and interpreting legal documents such as trade mark or design applications
- Protecting the IP of their clients, including representing them in court and negotiating settlements
- Facilitating the transfer of IP ownership rights
- Drafting licensing agreements and contracts
An IP lawyer may offer advice, courtroom representation or play a role in researching patent documentation. However, IP lawyers are legal specialists, and they lack the required qualifications to prepare patent specifications. This, combined with a lack of technical subject matter expertise, means IP lawyers are unable to successfully define and prosecute an invention that offers their clients the broadest IP protection.
The Difference Between a Patent Attorney and IP Lawyer
There’s some overlap between the skills and duties of IP lawyers and patent attorneys. While that can make things confusing, there is really one major difference between the two:
Patent attorneys are the only profession qualified to prepare patent specifications. They are subject matter experts who are uniquely equipped to translate their clients’ inventions into successful patent applications. Despite that expertise, a patent attorney that isn’t a practising lawyer cannot conduct court proceedings. Instead, patent attorneys aim to settle IP disputes outside of court through means such as cease and desist letters, opposition proceedings and revocation actions.
Conversely, IP lawyers specialise in the legal and commercial issues that are associated with IP. IP lawyers ensure their clients’ rights are enforced, both in and out of court.
Protect Your Intellectual Property with the IP Lawyers and Patent Attorneys at Kings IP!
Your intellectual property portfolio is one of your most valuable assets. Whether you’re a sole inventor or a multinational corporation, your patents, trade marks and designs represent a major investment. For help with protecting and prosecuting your intellectual property, get in touch with the patent attorneys at Kings!
The Kings team are independent patent and trade marks attorneys that work with clients all over Australia. With decades of industry experience and specialisations in mechanical engineering, life sciences, software, ICT and mining technologies, we are uniquely equipped to develop patent applications for some of Australia’s fastest moving industries. Contact us today for a confidential consultation to discuss your invention and your IP strategy.