Protecting your intellectual property is one of the most important things you can do.
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’s crucial to work with the right team of experts.
Intellectual Property (IP) lawyers and patent attorneys are two types of industry professionals who work to foster and enforce your intellectual property. While they may sound like they do the same sort of work, the roles of patent attorneys and IP Lawyers are very different. We will highlight these differences in this article.
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 and make amendments to a patent specification.
On a day-to-day basis, patent attorneys support their clients by:
Patent attorneys are required to hold formal qualifications in intellectual property and a technical area (e.g., chemistry, engineering, physics). This ensures they have a full understanding of their clients’ inventions and can provide meaningful insights during the patent drafting and prosecution process.
Patent attorney is a protected title in Australia. To become a patent attorney you must hold formal qualifications and experience. You need:
The Master of Intellectual Property includes study on the laws associated with patents, trade marks and designs. Knowledge gained through formal study is then applied during 2 years of on-the-job training. After the above requirements are met, the Trans-Tasman IP Attorneys Board can register an applicant as a Patent Attorney.
This mix of hands-on training and formal schooling ensures patent attorneys are experts in both the legal and technical aspects of their work. It also ensures that patent attorneys have experience with a wide range of clients and inventions.
While it’s not a requirement for registration, many of the team at Kings also hold traditional legal qualifications and have spent time practising as lawyers.
An Intellectual Property (IP) lawyer is a legal professional that specialises in intellectual property. They give legal advice, draft legal documents, conduct negotiations and provide representation in matters associated with IP. This includes patents, trade marks, licensing, registered designs and copyright.
On a day-to-day basis, an IP lawyer may assist their clients by:
IP lawyers are legal specialists, so they lack the required technical qualifications to prepare patent specifications.
IP Lawyers are legal professionals who are required to hold formal education, training and registration. To become an IP lawyer, you need to:
These are the minimum requirements. IP Lawyers may undertake further education that is specific to intellectual property and their intended areas of practice.
Formal education and hands-on training means that IP lawyers are invaluable in litigation. However, IP lawyers are not equipped, nor legally able to, prepare and prosecute patent applications with IP Australia.
There is 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:
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.
It’s common for patent attorneys and IP lawyers to work together where a matter proceeds to litigation as IP lawyers often need the technical expertise of Patent Attorneys to help construe patent documents.
Your intellectual property portfolio is your most valuable asset. 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 Intellectual Property Lawyers at Kings!
The Kings team are independent patent and trade marks attorneys who work with clients all over Australia. With technical qualifications in mechanical engineering, life sciences, software, ICT and mining technologies, we are uniquely equipped to prepare and prosecute patent applications for Australia’s fastest moving industries.
Contact us today for a confidential and complimentary consultation about your invention and IP management strategy.
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