FREQUENTLY ASKED QUESTIONS
Overview
Our frequently asked questions page is divided into a number of sections. If you have any further questions, please contact us here.
Our frequently asked questions page is divided into a number of sections. If you have any further questions, please contact us here.
GENERAL QUESTIONS
What is the ethos behind your practice?
Our practice has been established with the aim of providing clients with a high quality of personal service. Further information is available here.
What are your fees and charges?
Our fees and charges are competitive in comparison to other attorney firms based in Perth, Western Australia. We do not charge for a first consultation.
Please contact us directly for our schedule of fees and charges and terms of engagement.
Why are patent attorney qualifications important?
A patent attorney can be thought of as the interface between the law and engineering, science (and other disciplines). In preparing a patent application (a legal document) it is important that the person drafting the application fully understands the invention and the legal requirements.
What should I look for in a patent attorney?
You should choose a patent attorney who demonstrates a good interest in and an understanding of your invention. You should choose a patent attorney who is candid about the costs of the patenting procedure and has solid technical qualifications. Importantly, you should choose a patent attorney who shows an in depth attention to detail.
Must my patent attorney keep my invention confidential?
Yes, your patent attorney must keep your invention confidential. A fiduciary relationship exists between patent attorneys and their clients.
In Australia, the Professional Standards Board for Patent and Trade Mark Attorneys provides a code of conduct. Among other things, the code of conduct provides a framework for fair and equitable dealing between attorneys and their clients. In general, attorneys are bound by confidentiality and have a right of privilege on intellectual property matters.
The Institute of Patent & Trade Mark Attorneys provides a page on the role of your patent attorney.
Why is the patenting process expensive?
In terms of the patent specification, the document is a legal document that must fully define and describe the invention in explicit terms. Defining and describing an invention in explicit terms is a complicated task and requires a number of hours of work. Preparing a patent specification properly at the beginning of the process is crucial to adequately protect an invention.
In terms of filing your application globally, there is no such thing as a global patent. This means that experienced associates must be used in each jurisdiction to handle corresponding applications. Legal requirements and the need for experience with the patent system in each jurisdiction mean that it is necessary to engage patent attorneys qualified in those jurisdictions. Responses to examination reports need to be prepared in accordance with a specific legal framework of particular jurisdictions. Deadlines must also be monitored.
In terms of conducting a patent search, a search strategy needs to be prepared. Patent classes and keywords need to be identified to limit the risk of missing an important document. Also, it is not possible to read every published document in the world nor is it possible to search every patent office database independently. The use of commercial search databases and searching expertise is accordingly required. If a relevant search record is identified using the search strategy the associated document needs to be downloaded or ordered.
For the reasons above, engaging a specialist search firm is generally the most cost effective option for a patent attorney and his or her client. Of course, at your request, your patent attorney can always perform a cursory search.
Our practice has been established with the aim of providing clients with a high quality of personal service. Further information is available here.
What are your fees and charges?
Our fees and charges are competitive in comparison to other attorney firms based in Perth, Western Australia. We do not charge for a first consultation.
Please contact us directly for our schedule of fees and charges and terms of engagement.
Why are patent attorney qualifications important?
A patent attorney can be thought of as the interface between the law and engineering, science (and other disciplines). In preparing a patent application (a legal document) it is important that the person drafting the application fully understands the invention and the legal requirements.
What should I look for in a patent attorney?
You should choose a patent attorney who demonstrates a good interest in and an understanding of your invention. You should choose a patent attorney who is candid about the costs of the patenting procedure and has solid technical qualifications. Importantly, you should choose a patent attorney who shows an in depth attention to detail.
Must my patent attorney keep my invention confidential?
Yes, your patent attorney must keep your invention confidential. A fiduciary relationship exists between patent attorneys and their clients.
In Australia, the Professional Standards Board for Patent and Trade Mark Attorneys provides a code of conduct. Among other things, the code of conduct provides a framework for fair and equitable dealing between attorneys and their clients. In general, attorneys are bound by confidentiality and have a right of privilege on intellectual property matters.
The Institute of Patent & Trade Mark Attorneys provides a page on the role of your patent attorney.
Why is the patenting process expensive?
In terms of the patent specification, the document is a legal document that must fully define and describe the invention in explicit terms. Defining and describing an invention in explicit terms is a complicated task and requires a number of hours of work. Preparing a patent specification properly at the beginning of the process is crucial to adequately protect an invention.
In terms of filing your application globally, there is no such thing as a global patent. This means that experienced associates must be used in each jurisdiction to handle corresponding applications. Legal requirements and the need for experience with the patent system in each jurisdiction mean that it is necessary to engage patent attorneys qualified in those jurisdictions. Responses to examination reports need to be prepared in accordance with a specific legal framework of particular jurisdictions. Deadlines must also be monitored.
In terms of conducting a patent search, a search strategy needs to be prepared. Patent classes and keywords need to be identified to limit the risk of missing an important document. Also, it is not possible to read every published document in the world nor is it possible to search every patent office database independently. The use of commercial search databases and searching expertise is accordingly required. If a relevant search record is identified using the search strategy the associated document needs to be downloaded or ordered.
For the reasons above, engaging a specialist search firm is generally the most cost effective option for a patent attorney and his or her client. Of course, at your request, your patent attorney can always perform a cursory search.
INTELLECTUAL PROPERTY QUESTIONS
What is a provisional application?
A provisional application is an application that allows for further applications to be filed in the following 12 months before a full patent application is required. The advantage of a provisional application is that it allows for unknowns associated with an invention to be accommodated where those unknowns come to light within the twelve month period. The disadvantage of a provisional application is that generally no grace period in Australia, the US or a number of other jurisdictions attaches to the provisional application for prior disclosures. There are however a number of special circumstances. Furthermore, this disadvantage only applies if you have disclosed your invention.
What is an innovation patent?
An innovation patent has a lower threshold of inventiveness and a shorter term of eight years compared to a twenty year term for a standard patent. The possible advantage of a lower threshold of inventiveness is an important consideration in any patent filing strategy. Further information is available here.
Is there such a thing as an international patent?
No, there is no such thing as an international patent. There is however a procedure, known as the PCT application procedure, that allows for a preliminary search before you have to file in each jurisdiction of interest. The application procedure serves to both delay costs and provide an initial search report on patentability. Further information is available here.
What is a divisional application?
A divisional application is an independent application filed because there is more than one invention defined in the original application. Notably, filing a divisional application could effectively double your costs in terms of examination, grant and renewal charges. For this reason one should always consider whether filing a divisional application is justified or whether it is an unnecessary expense.
Can I rely on a non-disclosure agreement?
The short answer is that a patent application is usually much better protection than a non-disclosure agreement. A longer answer is available here.
A provisional application is an application that allows for further applications to be filed in the following 12 months before a full patent application is required. The advantage of a provisional application is that it allows for unknowns associated with an invention to be accommodated where those unknowns come to light within the twelve month period. The disadvantage of a provisional application is that generally no grace period in Australia, the US or a number of other jurisdictions attaches to the provisional application for prior disclosures. There are however a number of special circumstances. Furthermore, this disadvantage only applies if you have disclosed your invention.
What is an innovation patent?
An innovation patent has a lower threshold of inventiveness and a shorter term of eight years compared to a twenty year term for a standard patent. The possible advantage of a lower threshold of inventiveness is an important consideration in any patent filing strategy. Further information is available here.
Is there such a thing as an international patent?
No, there is no such thing as an international patent. There is however a procedure, known as the PCT application procedure, that allows for a preliminary search before you have to file in each jurisdiction of interest. The application procedure serves to both delay costs and provide an initial search report on patentability. Further information is available here.
What is a divisional application?
A divisional application is an independent application filed because there is more than one invention defined in the original application. Notably, filing a divisional application could effectively double your costs in terms of examination, grant and renewal charges. For this reason one should always consider whether filing a divisional application is justified or whether it is an unnecessary expense.
Can I rely on a non-disclosure agreement?
The short answer is that a patent application is usually much better protection than a non-disclosure agreement. A longer answer is available here.
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.
