Patent Attorney / Technical Advisor

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Patent attorneys act on behalf of their client to obtain patents and act and advise on all legal matters that relate to patents and intellectual property law. Patent attorneys need dual qualifications - as both attorneys and in a specialist technical field (for example biology or genetics). In the course of their normal duties a patent attorney may provide advice to their client on whether their product merits a patent and what kind of protection they could expect. They also provide information on litigation and objections to patents. Perhaps the most common specialisation in this occupation is in scientific patents.

Scientific Patent Examiner/Technical Advisor

This work is largely available in major law firms in capital cities, with increasing opportunities overseas. Scientists and specialists interested in this field who do not wish to complete attorney qualifications can sometimes find work as technical advisors employed by law firms. This job involves providing recommendations and evaluating evidence purely from a scientific/technical perspective and making this accessible to attorneys. This position can involve the following tasks:

  • assess whether patent applications provide an adequate technical description of the invention
  • assess whether the patent rights sought are justified and match the invention's technical description
  • search online databases to discover similar patents held in Australia and overseas
  • assess whether the advances claimed for the originality of the invention's features are new
  • report their findings to the patent applicant or the applicant's legal representative

IP Australia is the government body responsible for assessing and providing rights, patents and trademarks in Australia. Science graduates are eligible to apply for patent examiner positions with this department and if selected are provided with a specialist six month training course run by the patent office itself. This course negates the need for additional law training and is open not only to science graduates but also those who have undertaken studies in engineering, computer science and telecommunications.