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Investing in a patent attorney could save you in the long run

By Beatrice Thomas

Applying for a patent is a complex process that can catch out beginners. Choosing not to hire a patents attorney can be false economy. You run very real and serious risks of making costly and irreversible mistakes that may lose you the opportunity to protect your invention.  

IP Australia, the Federal Government agency that processes patent applications, says most applicants use professional help to apply for patent but some still opt to “self-file”.  

Most people use professional help because their invention is worth something – so the early investment in getting advice is critical,” says Roger Howe, IP Australia’s Assistant General Manager, Patents Mechanical and Oppositions Group.   

“The processes involved are relatively complex and there are a number of deadlines that must be met or your application will lapse and become invalid. 

“If you intend to file the application yourself, you need to ensure you’re well aware of the requirements. Not submitting the correct information may make an application invalid or incur additional expenses.  

He says a patent attorney will represent your interests throughout the patent process. For example, professional advice can help identify whether a standard patent or an innovation patent is most appropriate for your needs and business strategy.   

“Patent attorneys can provide you with advice and services at all stages of the IP protection: the initial drafting, filing processes, prosecution to grant and, if the need arises, opposition or other legal action,” Howe says. 

The complexity increases if you seek patent protection in other countries. For example, you may need to have a legal representative in each country where you want a patent. Patent attorneys will be well aware of the requirements and will be able to advise you on this.”   

High-risk areas 

Howe says the most difficult situations IP Australia has to deal with are where applicants have spent a considerable amount of money on an application: 

  • for an idea that is already known  
  • will never get patent protection because it is poorly drafted or  
  • for an idea that may be good but is not patentable subject matter.  

What’s already out there? 

If someone has published a document or filed a patent for the same invention previously, then you won’t be able to get a patent. These documents and patents are often referred to as ‘prior art’.  

“Take some time to look at what is already out there.  There are a number of freely available databases that can be used to get an idea of what is patented, or to give you additional information to further develop your idea. Some patent firms and specialist search firms can also provide this service for a fee.   

“IP Australia has services available that can help you identify prior art. This search can be done early in the process so you can make more informed business decisions before committing to spending more on your patent application”.  

Correct wording  

The wording in your claim for a full patent has to clearly scope why your invention is new. Claim too much, and you may find it is difficult to obtain or defend those rights. Claiming too little may mean you miss opportunities and competitors can easily work around your patent. Statements about the advantages of your invention are not considered as new features. 

Scott Vilé, principal at patent attorneys firm Wrays, says it’s particularly important for the wording of the patent specification, which accompanies a patent application, to correctly describe the technology and to set out the monopoly you’re seeking to obtain.  

The specification provides the foundation for all patent applications,” he says. “Without a strong foundation, the patent can readily fail.  Unfortunately, the point of failure is often too far down the patent process to be retrieved. 

Inconsistency 

If your full patent application (also known as a complete application) includes a feature which you did not describe in your initial patent application (also known as a provisional application), you may lose your priority date. The priority date is the date when you first filed for your intellectual property right. It gives priority over other subsequent claims for the same idea.  

Overseas applications 

Before you seek international patent protection without professional advice, IP Australia recommends you take ‘extreme care to be fully aware of the fees you’ll be required to pay and when you’re required to pay them. 

IP Australia also says effectively searching for similar inventions to yours on the databases of major overseas IP offices is a specialised skill. If you don’t get it right, you risk wasting money on applying for a patent of an invention that already exists.  

You could either hire a patent attorney or a professional to do the searches for you. IP Australia also offers an international search service. 

Applying for a patent is a complex process that can catch out beginners. Choosing not to hire a patents attorney can be false economy. You run very real and serious risks of making costly and irreversible mistakes that may lose you the opportunity to protect your invention.  

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