20. How to hire right patent attorney in Australia for patenting your invention

How to hire right patent attorney in the Australia for patenting your invention

How to hire a patent attorney in Australia: consider their qualifications, experience, and costs. Look for attorneys with relevant degrees and expertise in your field. Schedule meetings or calls to discuss their process and review previous work samples. Ensure they provide honest novelty searches and patentability opinions. Establish good communication and trust for a long-term working relationship. Balance costs and experience, avoiding excessively low or high-priced attorneys to effectively protect your invention.

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Patent Attorney
Patent Attorney

If you are still in the phase where you are confused regarding saving a few thousand dollars by writing and filing your patent application on your own (without the help of a patent attorney) you may read our detailed guideline on do I really need to hire a patent attorney? or can I do it myself?

In this article, however, we will learn some important points to consider when selecting a patent attorney based on the subject matter of your invention.

The question is: “ Out of thousands if not hundreds of patent agents/attorneys in the Australia, How would I find the right one for my invention? and even more importantly at the right costs? ”

The selection process for the right patent attorney could turn out to be a more complex process than you would have imagined. You may find most websites sound similar and it is quite difficult to differentiate patent attorneys with regards to what is the right fit for you, the subject matter familiarity, and the quality of patent drafting and filing services.

This problem is more intense for first-time inventors (who have not filed the patent before) who are searching for a good patent attorney and do not specifically know what to look for.

Selecting the right patent agent or attorney is a significantly cost-intensive decision that you are going to make and you would not want to be making mistakes in it. A patent attorney charges AUD 1500 to AUD 2200 or (USD 1000 to USD 1500). Hence it is wise to be prepared and not take the selection process lightly.

As you might have guessed, a good reputation and experience in dealing with patents from the field of your invention is the primary shortlisting factor and you can get to a shorter list of patent attorneys:

Does the patent Attorney have degree in your field of invention?

Whatever the patent attorneys are from a science or engineering background, their degree should match with the field of your invention. This is for obvious reasons like familiarity with the subject matter of the invention. Although this is not always necessary, as with the experience of writing hundreds and thousands of patents from different domains a patent attorney can build a decent understanding of most related fields from different domains like electrical engineering, instrumentation, automation, technology, software engineering, etc…
Hence, although not a strict selection criteria’ still as long as possible a patent attorney should have a degree from your field of the invention (or at least in nearby domains).

Personal visit to patent attorney’s office

Now, this is not always possible but in Ideal situation, it is recommended to visit shortlisted patent attorneys as a primary meeting and get a sense of proceedings by meeting one on one; there are far too many advantages to an in-person meeting before selecting a professional. It’s just way more comprehensive than discussing it on email or a call.

Shortlisting calls to attorneys: If the list of shortlisted patent attorneys is longer and you are unable to distinguish between them with the help of their online profiles It’s better to further shortlist them by scheduling a short phone call (5 to 10 minutes) with the patent attorney who is going to work on your invention.

Things to discuss with patent attorney before hiring

  • systems or process they follow for taking new client invention disclosure to granted patent
  • cost estimate for proceeding with your patent requirement
  • what is included and what is not included in the cost estimate shared 

Ask for previous work (granted patents) in the same field of your invention:

The previous work reveals many things about the quality of research and drafting for patents on which the attorney already worked on, like 

  • granted patents
  • novelty search reports and
  • responses to office actions
  • any other relevant work samples from your field of the invention 

You can visualize your end results by comparing previous work shared by the patent attorneys in communication.

Honestly disclosing real results for novelty search

This is another factor needed to be considered as in some cases the novelty search for the invention disclosure provided is not performed with adequate quality and attention to ensure a positive opinion of patentability… so that a client (applicant) moves ahead with drafting and filing of the patent application. As very close prior arts found in novelty search sometimes mean abandoning of drafting and filing patent by the inventor (due to lack of novelty).

Although this unethical practice is rare, it is however best avoided if a patent attorney appoints an independent patent research expert for performing novelty searches and provides honest patentability opinions.

Your comfort level while communicating

The comfort in communication and a trust factor is important while dealing with a patent agent/attorney.

This is to be decided on more of a gut feeling but nevertheless, this is still an important factor in selecting the right patent attorney to work on your invention. A personal primary visit to a patent attorney really helps in coming conclusion with this question. Have your own thoughts and opinion and trust your gut feeling as once selected, you are likely to work with him for years to come, even after granting the patent.

Now regarding making decisions based on Patent attorney charges, below is the most common question in minds of inventor

Shall I go for the most expensive patent attorney or the most economic one

hire right patent attorney in US
hiring right patent attorney

The cost of getting a patent for your invention in Australia heavily depends on the attorney you choose to work with. After all, your patent attorney is the only ally who will fight alongside you:

  • first for getting a patent ( fight with patent office) and
  • later in case of infringement of your patent, will fight with the infringing party.

Patent attorney’s charges typically vary with their expertise and experience. highly experienced patent professionals charge the highest amounts, and you probably do not need the highest possible patent professional in Australia to work on your invention as it could be super expensive.

Having said that, you also don’t want to be working with an inexperienced patent attorney or who is charging ridiculously low fees compared to other patent attorneys.

In such cases, you are at the risk of losing the entire effort you put in research and development along with the rights on your invention if it is not well written and not protected with appropriate claims…

The ideal case would be a patent attorney with moderate charges and significant experience in your field of invention who can give justice to your efforts and protect your invention to the fullest possible extent.

If you happen to make a mistake, be sure that you are selecting the higher side of the costing… rather than selecting an attorney with the lowest possible charges. This is because you still will be on the winning side even if you choose a slightly highly charged patent attorney as he will ensure that your invention would be appropriately protected !!! and you do not end up losing rights to your invention due to the poor quality of the patent application.

If you are interested in knowing some of the known strategies to save costs when working with an experienced patent attorney, check our section on How to save costs when working with an experienced patent attorney

If you wish to discuss your invention and patent attorney charges for helping you with your patent filing requirement, contact here.

Prasad Karhad
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