Are Patent Attorneys and Lawyers the same ?

In Australia, patent attorneys are not lawyers, and a professional using the title “lawyer” has completed a law degree, and if they intend to give legal advice, they must also have a current practicing certificate. A lawyer who is “admitted to the Bar”, referred to as a “barrister” is capable of representing clients in most Australian courts.

Many people confuse the term “attorney” with “lawyer”, due to the widespread use in American movies and TV shows, where the official US term for a lawyer is “attorney”. However, in general English usage the term “attorney” simply means someone appointed to act for another in business or legal matters.

In Australia, “patent attorneys” represent their clients before IP Australia, which is the government office for registering patents, trade marks and designs. A patent attorney represents a client by preparing and filing a patent, trade mark or design application, and during examination of such application. In addition, patent attorneys may represent their clients before hearing officers of IP Australia, such as in opposition proceedings. Unlike, lawyers they are unable to represent their clients before a court of law.

To be registered as a “patent attorney”, a person must have a suitable qualification in a field of science or technology, such as a university degree in Science or Engineering. They must also have passed (or have exemption) in various topics of IP Law, which at present are offered in post-graduate “Master Degree” courses.

The most valuable skill a patent attorney possesses, is the ability to draft a “patent specification”, namely the document that describes and claims the invention for which protection is being sought, and which must accompany a patent application.

In Australia, the Patents Act 1990 entitles a registered patent attorney to prepare all documents, transact all business and conduct all proceedings for the purposes of that Act.  Since a “patent specification” is an important and necessary document for filing a patent application, a lawyer is not involved with the preparation and filing of a patent application, except where that lawyer is also a registered patent attorney.

Whilst registered patent attorneys are not lawyers, Section 200 of the Patents Act 1990  provides that a registered patent attorney can give a wide range of intellectual property advice to a client, and such advice is “privileged” in the same way as when a legal practitioner (lawyer) provides legal advice to a client.

Whilst a patent applicant can self-file a patent application, in most instances they do not have the necessary skills to ensure the best possible protection is sought. IP Australia acknowledges that the patent process from application to grant is an uncertain and daunting journey, and recommends that first time applicants can greatly increase their chances of success, by engaging a patent attorney. See the IP Australia “attorney tool kit” at  https://www.ipaustralia.gov.au/patents/engaging-an-attorney-toolkit/what-expect-your-first-meeting-your-attorney

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