Patent attorney and IP lawyer - not the same in Australia!
One of the things that called my attention the most when starting to practice in Australia was the fact that here, lawyers are not permitted to do a lot of the necessary work in relation to patents. In fact, there’s a whole separate profession of “patent attorneys”, who are often not actually lawyers. This is obviously very different to civil law jurisdictions - like Chile - were IP lawyers can legally draft patent specifications without the extra requirements.
Knowing this difference is crucial when looking into or considering entering the Australian market with your inventions (specially when coming from civil law jurisdictions where this distinction does not exist). It is not only important but also time and cost effective to make sure you understand the difference when trusting your business’ most valuable assets - your Intellectual Property portfolio - to a legal professional. When looking to register your IP rights and patents in Australia, take extra care on relying with qualified professionals. We’ll explain the difference below.
Australian lawyers are able to provide advice on intellectual property matters (including trademarks), but are not allowed to prepare or amend patent specifications. The must possess university qualifications in law.
A patent attorney is permitted to prepare and amend patent specifications, advise on matters of infringement and validity, and generally and represent clients before the Australian Patent Office. They must have technical qualifications, such as a university degree in science or engineering. However, they do not require university qualifications in law.
This creates a complex situation. There’s limits to the advice lawyers can provide on patents, and patent attorneys cannot provide clients with general legal advice outside of patents.
There are a handful of dual-qualified experts who are both lawyers and patent attorneys, who are uniquely able to provide comprehensive IP advice covering patents (and other forms of IP), along with licensing and commercial law matters. We are very lucky that at SCL, our director Matt Ward is one of these rare ‘double qualified professionals’ – giving your business not only an experienced lawyer but also a lawyer that can draft your patents specifications with IP Australia and represent you with the patent office.
Contact us if you would like to discuss your invention or IP strategy with us - we’ll be happy to assist.
