Questions to ask when choosing a patent attorney. Answers to the following questions should assist you in determining whether the attorney or firm you are approaching will be the right choice.

Who will do my work?

It is important that you understand who will be doing your work and whether the patent attorney you have chosen will be assisted by someone else.

Are they registered as a patent attorney in Australia and when were they registered?

Registration of patent attorneys is administered by the Federal Government through the Professional Standards Board for Patent and Trade Marks Attorneys (the Board). Australian patent attorneys must meet a set of stringent criteria administered by the Board. Registration of Australian patent attorneys can be checked by reviewing the Registration of Australian patent attorneys website.

What are their technical qualifications?

It is a core requirement to be registered as an Australian patent attorney that the person holds a university degree or diploma in a field of technology that contains potentially patentable subject matter. Remember that patent attorneys often become quite knowledgeable in certain technical areas that might be considered outside their educational background due to having had many years of experience of filing and prosecuting patent applications. If you do not think the attorney is suitable, you may seek a recommendation of another patent attorney more suitably qualified and experienced.

What steps are involved and what is the likely time frame for completing the work required?

It is important that the attorney explains and you understand all of the steps involved in securing protection for your IP and the time involved to complete a given matter. For example, to obtain enforceable patent protection for an invention in a number of countries can take many years.

How do they normally charge for their services and what will it cost to undertake the work required?

It is important that you fully understand the charging practices of your selected patent attorney. Some charges will be based on the time required to carry out a particular task based on the attorney’s hourly charge-out rate while other services may be charged at a pre-set rate. Due to the necessity to incur costs on behalf of clients, some attorneys may insist on payment in advance. Other attorneys may be prepared to offer a payment term (e.g. 7 days). You should also seek information as to how much the various steps that need to be undertaken are likely to cost. In some cases, it may be difficult for your patent attorney to provide a quote as the charges will depend on the time taken and the complexity of the work. As such, it is important that you provide full and frank information on your invention and your commercial plans and be conscious that it can be difficult to precisely predict the total of all charges many months in advance of the work being performed. It may also be necessary for your patent attorney to engage the services of agents overseas ( typically another firm of attorneys) if you choose to seek foreign IP protection. Foreign agent’s charges can be significant and are subject to variation due to exchange rate fluctuations, changes in official fees, and changes in those agent’s charges. As such, always carefully assess the appropriateness of pursuing foreign IP protection well prior to the due dates provided by your patent attorney. Also note that instructing your patent attorney close to a deadline can result in additional charges. It is recommended to always try to instruct your attorney as early as possible.

Do they belong to the Institute of Patent and Trade Mark Attorneys of Australia (IPTA)?

IPTA members are obliged to abide by a code of conduct set out in a series of By-Laws and a Code of Ethics established by IPTA. The Institute is the representative body of the patent attorney and trade marks attorney professions in Australia and was established for the purpose of promoting improvements in the laws and regulations relating to patents, trade marks, designs and copyrights.Contact IPTA: http://www.ipta.com.au/ ormail@ipta.org.au  or 03 9857 0311 The Institute of Patent and Trade Mark Attorneys of Australia