How to choose a Patent Attorney

Why use a patent attorney?

1. Patent attorneys know how to leverage your clever ideas for business success

Our experience is based on working with hundreds of people just like you. We take time to understand how your intellectual property fits into your business plan and help devise a strategy to leverage that intellectual property to maximise your return. Not only do we help with advice around patents, but we also help you understand all aspects of intellectual property including branding (such as advice on registering trade marks), copyright, registered designs, plant variety rights, trade secrets, confidential information, licensing, and so on.

2. Patent attorneys give you the upper hand

Obtaining a patent can be thought of as a negotiation - you are negotiating with the government to gain the right to exclude others from using your invention. The government grants you that right only if the invention is new and non-obvious, and the patent application describes the invention in sufficient detail.

In our experience only a small number of inventors are capable of describing their invention in sufficient detail to succeed in their negotiation. Also, very few inventors are capable of assessing whether their invention is truly new, let alone non-obvious - conducting a quick internet search does not determine this.

This may surprise you, but the patent application is a legal document that is interpreted in a very peculiar way. Most inventors do not routinely draft legal documents, have a deep understanding of patent legislation, or review case law on a daily basis. As such, the government has the upper hand in the negotiation.

By the time the government finally refuses to grant a patent for the invention, the government has published the application for the entire world to see allowing competitors to implement your invention. And so ends a fruitless negotiation - and your competitors have just benefited from your R&D without lifting a finger.

That is why it is important to use a patent attorney - we help you gain the upper hand in your negotiation with the government.

We are a strange breed - we draft legal documents daily, we spend our lives learning the intricacies of patent legislation and case law. We understand precisely how much detail to include in the patent application, and how to emphasise the new and non-obvious properties of your invention.

We enable you to own and control the intellectual property not only in the prototype, formulation, method, system, etc that you have invented, but also to carve out your niche to give you space to nurture your idea and grow your business.

3. Patent attorneys help you recognise how clever you are

We are qualified to provide advice across a range of intellectual property aspects. We help provide a unified intellectual property strategy for your business. It is true that some general service lawyers can provide advice in relation to trade marks and copyright, for example, but using a patent attorney ensures that none of your clever ideas are left undiscovered because your lawyer doesn't have the expertise to recognise them. Many patent attorney firms also employ commercial lawyers, to negotiate aspects of your business on your behalf and provide a more complete service.

4. Patent attorneys help you to future-proof your business

Sometimes you may not have invented anything patentable at all, but just want an assurance that you will not infringe any other person's intellectual property rights when you, for example, take your new product to market. Patent attorneys are the best people to provide that assurance, or uncover a threat to your future business. We are uniquely placed to conduct searches to determine if you are in the clear, and to provide advice on how to avoid any threats that are uncovered.

5. You can trust your patent attorney

Patent attorneys have a right of privilege in their communication with you relating to intellectual property. This give you confidence that you can build a trusting relationship with your patent attorney.

Patent attorneys are subject to a Code of Conduct guaranteeing an appropriate level of service and are subject to disciplinary proceedings for unsatisfactory professional conduct and professional misconduct. This provides you with confidence that you will have recourse in the rare event that you receive very poor service. Many patent attorneys will also have professional indemnity (PI) insurance.

6. We act in both New Zealand and Australia

Patent attorneys are equally qualified to practice in both Australia and New Zealand, as Trans-Tasman Patent Attorneys. For many Kiwi innovators, these two markets are central to their business, and being able to use a single patent attorney for both countries can help to significantly reduce your overall costs.

Beyond New Zealand and Australia, our vast international network of associates enables us to help you wherever your markets are.

How to choose a patent attorney

At the heart of our service to you is understanding how your clever ideas can help your business grow. As such, your patent attorney should be able to quickly gain an appreciation of those clever ideas and how they can be leveraged within your business.

When confiding your precious invention in a person, an invention that you believe is new and would not be considered obvious, it makes sense for that person to be able to quickly and deeply understand your technology.

You should choose a patent attorney with experience working with inventions like yours and with a sound grasp of the law. One way to work out whether a patent attorney will understand what you are talking about is to look at their profile on their Firm's website. Many patent attorneys will detail their tertiary qualification(s) and experience working in various fields of science and engineering. Some patent attorneys also have postgraduate qualifications, and some also have law degrees. All people calling themselves patent attorneys have studied additional intellectual property law subject areas and passed independently run examinations in those areas, and have met other requirements prior to registration.

Beyond expertise, it is important to ensure that your patent attorney is able to work to your budget. It goes without saying that some patent attorneys will be more expensive than others. You should take time to understand the value that you will get for a particular cost, and to understand how those costs will progress over time.

You should understand your patent attorney's capacity. Good patent attorneys are often in demand, but this is not always true. As your patent attorney will explain, time is often of the essence when pursuing intellectual property rights, and your patent attorney should have the capacity to work to your timeline.

Good communication skills are critical for a patent attorney. We deal with complex inventions, complex businesses and complex legal concepts. Your patent attorney should be able to clearly communicate what you need to know, and likewise understand what you are saying. To that end, some innovators are happy working with their patent attorney electronically while others prefer to be able to meet face-to-face. You should discuss your needs with your patent attorney.

Enquire as to whether your patent attorney will provide an initial, short, cost-free consultation. At the very least you may gain a high-level appreciation of whether developing an intellectual property strategy is critical for your business (hint: it is).

How to prepare for a meeting with a patent attorney

As patent attorneys, we need to understand your business and how your intellectual property fits into your business plan. Be prepared to explain your business to your patent attorney, so that your patent attorney can recommend a course of action. There are times when pursuing intellectual property rights is not recommended, and other times where it would be prudent.

If you are meeting with a patent attorney to discuss your latest invention, try to provide us with as clear a mental picture of it as possible. If appropriate, bring in your working prototype - kept covered when in public of course!

Before meeting with a patent attorney, ensure that you do not tell people outside of a confidential arrangement about your invention. Your patent attorney can then provide guidance on how to disclose your invention to potential investors, for example.

Being able to succinctly describe the approaches taken by other parties working in the field can help the patent attorney gain an initial view on whether the invention is sufficiently new and non-obvious to enable patent protection. Be prepared to describe the similarities and differences between your invention and your competitors' offerings.

Be prepared to pay for meeting with your patent attorney unless you have arranged otherwise. By now, you value your own intellectual property, so we are confident that you will value the intellectual property of the patent attorney meeting with you. Be aware that patent attorneys will typically charge on a time basis. Depending on how valuable your time is, it is usually worthwhile spending time before the meeting preparing a written summary of some of the issues discussed above.

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