16. Do I really need to hire patent attorney in Australia for filing my patent ?

Do I really need to hire patent attorney in Australia?

While hiring a patent attorney is not legally mandatory, it is highly recommended. Patent law is complex, and a qualified patent attorney can provide valuable expertise in drafting and prosecuting patent applications, conducting prior art searches, navigating legal requirements, and maximizing the chances of obtaining a strong and enforceable patent.

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Can I file patent by myself, without patent Attorney ?

Can I file a patent application on my own? without patent attorney?

It is possible !!! you can file the patent application without help from a Patent agent or attorney, before you jump-start writing and filing your own patent application, below are some points to consider so that you would be making an informed decision:

 Even Australian Patent Office recommends using a registered Patent agent /attorney to assist in preparing and prosecuting a patent application because writing a good patent application involves so much more than a first-timer can accommodate into his / her writing,  even a trained Patent attorney/agent require at least 3 to 5 years of experience to be able to write reasonably good it in the application. Hence it is worth giving a second thought to it, if you have decided to do it yourself. 

“A patent application not written properly could prove a costly mistake in future as it will not protect your invention as you expected it to do and it will probably not be worth the time and effort and costs you put to get the invention protected.”

There are rules to be followed about many things while writing a patent application: 

  • rules about writing title of the invention
  • rules for writing abstract
  • how claims should be written
  • how detailed description should be written
  • rules for drawings
  • rules for numbering the drawings
  • rules for pages… and many more 

It is very likely that the first-time inventor or do-it-yourself patent writer would be making some obvious mistakes that could prove costly in the longer term.

Hence it is highly recommended by even Australian Patent Office to hire a patent agent or patent attorney for filing your patent application.

Even if we keep aside the complexities and accuracy required in filing a patent application at Australia Patent office, considering you are drafting/writing a patent application on your own:

A patent application drafted by a non-experienced / first-timer / or DIY patent writer will find it difficult to meet expectations as mentioned below:

  • satisfy all the patent rules, practices, and requirements established by patent law
  • use the wisdom from case laws (to improve our patent application)
  • cover broadest possible scope for the invention
  • be extremely accurate in writing a techno-legal document (as the simple use of words like comprising or consisting changes the scope of the invention)
  • covering all possible embodiments of invention
  • supporting claims in the detailed description
  • and more importantly, protecting that aspect of the invention which is commercially important in patent commercialization phase (after the grant of patent)
  • and many more things to be ensured

it is clear from the list above that it would be very difficult for a first-time / DIY or doing it myself patent writer to match the quality, accuracy and comprehensive coverage of scope of the invention in the patent application drafted by an experienced patent attorney/agent.

As an inventor you probably ask this question to yourself many times… Should I really go for hiring a patent attorney? or will I be able to do it (writing and filing the patent application) myself?

You can file a patent application on your own without help from a patent attorney;  However, while doing so you can make some serious mistakes that can result in inadequate protection to your real invention that is not covering the scope of the invention properly, and poorly written patent applications may even result in rejection of the patent or sometimes you may end up having weaker protection (weak claims) for your invention that ultimately can result in the loss of some or all of your patent rights.

Common mistakes in patent application done by DIY inventors:

  • A detailed description of the invention is not sufficient enough or not enabling
  • Claims are not supported in the description of the invention
  • Claims are not protecting the actual invention properly
  • The claims written are too limiting and lack the proper legal terms to be able to have border scope
  • All possible variations, embodiments are not mentioned
  • The best mode of practicing the invention is not disclosed 

and many other types of mistakes that can raise a lot of objections in the proceeding of getting a patent for your invention.

A patent is a Techno-legal document: Writing a patent application also called patent drafting is a specialized skill, and it takes years of practice and experience for a patent attorney/patent agent to be a good patent writer.

To write a good patent application:

you need to have a fair understanding and experience in 

  • Patent law and patent office rules and regulations
  • Case laws affecting the interpretation of patent law
  • Technical skills of the subject matter of the invention 

As an inventor, you can be a leading expert in your field of invention and have a very good understanding of the subject matter of the invention which is the technical side of Patent, but you may face challenges on the legal side. If you are writing a patent application on your own i.e. without patent attorney/agent chances are your patent application would be just a technical description of the invention and may fail for its sole purpose of “protecting your invention with the right patent”

Patent attorney/agent will be having an understanding of how existing prior arts (found in search results) can affect the possibilities of granting a patent for your invention, identify possible issues with the scope of the invention (sometimes narrowing the scope), and can adjust the patent application writing such that you stand a better chance of grant of patent.

Although it may look obvious or easy, patent drafting is a very difficult level job and involves years of experience, the right approach to balance the scope of patent application between protecting too much and protecting too little

An experienced patent attorney / agent can help you in:

  • Writing a quality patent application that appropriately protects the invention
  • Writing the patent application in such a way that it not only gets through the examination stage to the grant but also helpful in patent commercialization/monetization stage with strong claims
  • Preparing patent application and other relevant documents and forms for filing at Australian Patent Office
  • Doing Novelty search to ensure the novelty of the invention
  • Following patent procedures like filing, examination, office actions, and applicable fees at appropriate stages
  • Represent inventor in an entire patent procedure that is from filing to grant of patent 

“A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice”

Generally, a patent attorney is an attorney that possesses both the legal and technical expertise necessary to represent clients before a patent office.

The scope of duties for a patent attorney can be broad and include representing clients in all matters and procedures relating to patent law and practice, such as preparing, drafting, and filing patent applications, prosecuting patent applications representing clients in other patent-related matters.

In some countries, patent attorney and patent agents are used interchangeably and in other countries, a patent attorney is used only if the person has qualified as a lawyer. By executing the power of attorney, the inventor can appoint a patent attorney or agent to represent him for patent proceedings at Australian Patent Office.

 A well-written patent application by a Patent attorney provides the strongest possible protection to your invention 

What we mean by strongest possible protection ? 

  • The invention is protected by every possible angle and with all minute details
  • All possible number of claims are covered
  • Claims are written such that competitors should not be able to design around
  • All possible embodiments are covered
  • The description is written in as much detailed manner as possible
  • All elements of the invention mentioned in claims find it’s support in the detailed description
  • The best mode is disclosed

It takes an extraordinary amount of time and effort on the patent attorney’s part, hence the higher costs. 

The invention is described in a basic simple format and then all the possible variations (also called embodiments) are explained. By doing this you can claim that these variations are also part of your invention and hence tend to provide much broader protection to the invention.

Eventually, it better protects your invention from other parties trying to design around the invention by bypassing the claims to avoid infringing on your patent.

So, on a concluding note:

if you are sure of the commercial potential of your invention and do not want to leave things to chance and do not wish to make the above-discussed mistakes by writing a patent application on your own, then it is advisable to go with hiring the right patent attorney for protecting the invention.

Advantages of working with a patent attorney or patent agent

  • The patent attorney is aware of Patent law and can make the best use of this knowledge for the protection of the invention to the fullest possible extent.
  • The right words that are used while writing patents can make a significant difference in meaning and deciding the scope of it. A patent attorney can use the right language while writing a patent to your advantage.
  • Patent agent/attorney would know how to write a patent application and claims to have the broadest possible protection for your invention such that your competitors should not be able to copy your invention or just design around your invention by changing a few things and not infringing on your patent.
  • Writing a patent application itself has extensive laws, rules, and procedures applicable, and a number of things to consider, there are rules related to margins of the page, rules for writing the title, abstract, claims, diagrams, detailed description, best mode, need of enabling disclosure, etc…
  • The entire process from inception of an idea/invention to granted patent and to monetization or commercialization of patent becomes a smooth experience for you when you have an experienced patent agent/attorney guiding you at every stage
  • In the office action stage, the objections raised by the patent office (if any) would be handled by an experienced patent attorney/agent and the response to the objection would be more informed and capable of putting a strong argument in favor of obtaining a patent for your invention. The patent attorney tries to negotiate with the patent office and stands a better chance to get approvals for the grant of the patent.
  • and not to forget the importance of dates, timelines, and subsequent steps that you should be considering for the entire procedure and many more things that the patent attorney takes care of with the right information and experience. 

Considering the advantages mentioned above the investment in going for a patent agent or attorney look pretty reasonable in the life of your patent (invention).

ultimately it depends on the level of seriousness that you have with your invention and your willingness to protect the invention with the help of an experienced patent agent or attorney.

in other words;

 “you may get the patent granted for your invention which you have written on your own but when it comes to monetizing or commercializing the patent in the market, you may find out that you failed to protect your invention with the fullest scope, or the claims of the patent have no commercial value in the market.” 

In such case, even though you have a granted patent for your invention,  you do not have the broadest possible protection for your invention as claims are written by the inexperienced inventor and you would not be able to stop others from competing with your invention without infringing on your patent.

Hence an experienced patent practitioner with years of experience would know what could be commercially important aspects of your invention and how to write a patent application that would 

  • Provide broadest possible scope for our invention
  • Competitors should not be able to copy or compete with our invention without our consent
  • Competitors should not be able to work around our patented invention and build similar solutions without infringing on our patent (this is the most important expectation)
    • we should be able to monetize the patented invention by
    • by producing patented invention without worrying about competition
    • by licensing it to other companies to get royalty payments
  • by completely selling the patent rights to other businesses and getting significant monetary benefits for your efforts 

if you are serious with your invention and don’t want to lose its entire Novelty or don’t want to lose upon the opportunity to take it to its deserving successful level then you should consider hiring a patent agent or attorney. It is well worth the investment.

Effective first meeting with patent attorney

The first meeting with a patent attorney should always start with a Non-disclosure agreement (NDA).

 A non-disclosure agreement is an agreement that a patent agent/attorney or Intellectual Property firm is doing with you, for keeping the confidentiality of your invention.

In other words, the Patent practitioner doing this non-disclosure agreement with you (inventor) and agreeing on keeping your invention confidential/secret and do not misuse it.

There are no cost or charges for doing this agreement, however, it is a strong document which you can take it to court your invention is misused by the Patent practitioner (but this almost never happens)

The first meeting with the patent agent or attorney could be in person or communication on call or via emails. The first thing always remains the same, signing a Non-disclosure agreement with the inventor to keep the invention confidential.

Having an effective first meeting with the Patent Attorney / Agent

To have an effective first meeting with the Patent practitioner you should be ready with:

  • a detailed description of the invention where every aspect of it is completely captured
  • Diagrams, flowcharts, and illustrations if applicable
  • comprehensive list of keywords, synonyms, and search terms
  • list of closest possible prior arts
  • differences and problems with prior arts that our invention is solving
  • other products or services in the market that are similar to our invention
  • our competitor working in the same field
  • what feature is novel and non-obvious
  • a commercially important feature to protect
  • sample claims from your point of view 

along with all the relevant answers to questions from the invention disclosure form

Our detailed article on how to go from idea to invention disclosure would help us to be well prepared and it becomes an easy job for us now… all we need to do is share the outcome documents that we have prepared along with the closest possible prior arts that we have identified.

Ideally, the Patent agent or attorney would like to go through all this information before having a meeting with you such that the meeting becomes fruitful and result-oriented.

It is important for you to understand that all the information that is relevant to the innovative ideas should be disclosed to the patent attorney sometimes seemingly unimportant or trivial information could prove important in the context of the invention.

Another important aspect of this first meeting with the patent attorney is to get working invention disclosure having sufficient information about the innovative idea such that it becomes enabling,  and a person skilled in the art would be able to practice their invention based on the disclosure. And with the detailed invention disclosure, the Patent attorney could perform the comprehensive Novelty / Patentability search.

It is important to discuss all the synonyms and different sets of keywords used to identify the same element of the invention,  here again, or preparation that we did in the Idea incubation phase comes to the rescue and we are already ready with all the synonyms and parallel words used for different elements of our invention.

Many times it is important for a patent attorney to understand whether the elements of the invention could be replaced with something similar and still perform their intended purpose? List down all such elements that could be replaced so as to form the highest possible protection while writing claims and a detailed description of the invention.

 one of the important objectives of the first meeting with the patent attorney would be to identify the novel feature or novel part of the invention along with identifying commercially important elements of the invention. 

Drafting the first independent claim in the meeting itself

If we have performed all the steps correctly until now, and have communicated all results to the patent agent or attorney before the meeting for review (of course after signing NDA online or via email) then this step can be taken easily.

It would be really helpful if a patent attorney could draft the first claim (first independent claim) for your invention during the first meeting itself,  as most of the description in the patent application follows the claims, it would be a great achievement if you and patent agent or attorney could write the first set of claims in the first meeting itself. Of course, the claim would be revised and updated but if we could get finalized set of at least the first independent claim in the first meeting itself when you and the patent attorney are together then this would be a great head start for moving towards filing a patent application for your invention.

This step will greatly enhance the speed of completing the patent application as having finalized set of claims ready will make the job of writing the patent application easier and less time-consuming.

for more information on the process, the inventor should follow while selecting the right patent attorney in Australia to work with and regarding deciding whether to go for a most expensive attorney or the most economic attorney for patenting your invention check our section on hiring the right patent attorney in Australia.

You may also read How to save costs when working with an experienced patent attorney 

Prasad Karhad
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