Disclaimer

Overview

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.

Please contact us directly for our schedule of fees and charges and terms of engagement. A brief summary of costs is available here.

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.

In our opinion it is advisable to meet with at least two patent attorneys from different firms before proceeding with a patent application.  Please contact us to arrange a meeting.’

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 be monitored.

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 12-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. Further information is available here.

What is an innovation patent?

Unless a standard application has already been filed, innovation patent filing opportunities will be limited post 25 August 2021.  Further information is available here.

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.

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 usually provides 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.