What does a patent attorney’s work include?
The work of a patent attorney is highly varied but includes the following representative tasks:
Patent preparation, lodgement and prosecution
A patent attorney prepares and lodges patent applications for their clients in Australia and overseas. After applications have been filed, the patent attorney corresponds with the various patent offices and submits any required arguments and amendments to highlight the newness and inventiveness of the invention described in the patent application in light of earlier published patent applications which may be uncovered during searching.
If a client’s patent is infringed by a third party, a patent attorney can provide infringement and validity advice regarding the clients existing patents. Such advice may also include novelty searching and freedom to operate searches. Alternatively, a patent attorney may provide his/her client with an opinion on whether a product might infringe a competitor’s patent. This advice may also include suggested modifications to the product that will avoid infringement.
Commercialisation includes watching patent and trade mark applications filed by key competitors, and tailoring patent and trade mark portfolios to best suit a clients objectives ranging from defensive to aggressive positions. A patent attorney may be involved in negotiating with third parties to secure royalty and license fees.
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