Intellectual Property Lawyer
Patents Attorney

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A patent examiner checks applications for inventions to see if they qualify for a patent. A patent protects an invention from being remade or sold by anyone else. It is your job to find out if an invention is unique enough to be granted a patent. A patent examiner works in an office, examining Australian and international patent applications. The role includes assessing detailed written descriptions of inventions and associated claims to determine whether the application meets the legislative requirements of the Patents Act 1990.

Examination work is performed independently and as part of a small team; however, examiners must take responsibility for and manage their own work, meet set targets, and perform other search, examination and administrative tasks to achieve other team or organisational goals.

Patent examiners investigate patent applications and report on whether they comply with the requirements of Australian patent legislation before granting patent rights for new inventions.

ANZSCO ID: 224914

Alternative names: Patent Examiner,
    
Specialisations:

Knowledge, skills and attributes

To become a patent examiner you will need to have a strong interest in technology and be able to quickly understand technical jargon. It is your role to make sure each application is new and that there is nothing like it that already exists.

To become a patents examiner, you would need:

• decision-making and research skills
• good oral and written communication skills
• able to work as part of a team
• Australian citizenship or eligibility to apply for citizenship

 
(Source: My Big Tomorrow)

Duties and Tasks

The job involves reading a lot of technical documents, doing Google searches, looking through Intellectual Property and library databases as well as meeting with colleagues to discuss the search and other places to look.

As a patents examiner, you would:

• assesses 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
• searches online databases to discover similar patents held in Australia and overseas
• analyse application documents to determine whether legislative requirements are met
• assess whether the patent rights sought are justified and match the invention's technical description
• assess whether the advances claimed for the originality of the invention's features are new
• communicate with the patent applicant or their legal representative
• depending on experience, either recommend or approve the acceptance of a patent application
• reports their findings to the patent applicant or the applicant's legal representative.

Did You Know?  Caitlin Burke  Trainee Patent Examiner Bachelor of Engineering (Mechanical Engineering) (Hons), Bachelor of Science (Chemistry) Caitlin was looking to move to Canberra from Perth and saw an advertisement on a jobs’ website for a patent examiner intake at IP Australia. She did a Google search to try and find out more on what working here would be like. Now, as she explains, she ‘gets to look at inventions all day … before they go out to market’. ‘I [also] thought it was cool that high profile people like Albert Einstein and Thomas Jefferson had worked as patent examiners,’ she added. With a background in mechanical engineering, once an area dominated entirely by men, Caitlin said she would advise younger women ‘to find people they find inspiring and follow in their footsteps. Not necessarily copy them, but think about the things that have got them to where they are and how they could use similar tactics’. In regards to her work at IP Australia, Caitlin says she’s looking to be involved in education as well as science, technology, engineering and mathematics (STEM) programs. ‘While completing my degree I was very active with Robogals, a student-run organisation that aims to increase female participation in engineering, science and technology.’ (Source: IP Australia)

Working Conditions

You will be working with databases, procedural manuals and legislation so solid English skills will be an advantage to understand all the aspects of your job. Mathematics is also important to understand the technical subject matter you will read.

The work of patent examiners is technically complex. It involves knowledge of technical processes used in industry and advances in scientific research.

It also involves making legalistic decisions based on their knowledge of patent law.

Tools and technologies

A patent examiner uses a variety of examination tools including, but not limited to, in-house and worldwide patent and technical databases, procedural manuals, legislation and their own intellectual capabilities and technical knowledge.

Education and training/entrance requirements

To become a patent examiner you usually have to complete a degree in science or engineering at university. To get into these courses you usually need to gain your HSC/ACT Year 12. Prerequisite subjects, or assumed knowledge, in one or more of English, mathematics, biology, chemistry, earth and environmental science, and physics are normally required. Most universities in Australia offer degrees in science and engineering.

Universities have different prerequisites and some have flexible entry requirements or offer external study. Contact Open Universities Australia or the universities you are interested in for more information as requirements may change.

Patent examiners are primarily employed by IP Australia, the government body responsible for administering Australia's intellectual property (IP) rights, including patents, trademarks, designs and plant breeders' rights. IP Australia recruits graduates from a range of science and engineering disciplines, including mechanical engineering, biomedical engineering, chemical engineering, chemistry, biotechnology, pharmacology, electronics, telecommunications, computer science and physics. The ability to speak a second language may be an advantage.

IP Australial provide the appropriate legal and procedural training to enable a patent examiner to perform their duties effectively. The initial full-time training course is competency based, which includes formal and on-the-job training. You must complete all stages of the program successfully to meet the conditions of employment.

To be a patent examiner you need a recognised degree, or a diploma and appropriate industry experience. We look for specific qualities, skills and technologies during recruitment. Overseas degrees must conform to Australian professional standards and be formally recognised.

You need a bachelor degree in engineering, chemical science, chemical engineering or another relevant field to work as a Patents Examiner. It is also common to complete postgraduate studies.

Additional Information
  
Fluency in written and spoken English is essential.

Registration as a patent attorney in Australia is administered by the Professional Standards Board for Patents and Trade Marks Attorneys.

Employment Opportunities

Experienced patent examiners have additional career opportunities in other government departments, in the patent sections of large companies or as technical assistants at the numerous patent attorney firms.

Vacancies with IP Australia are advertised by APS Jobs and on the IP Australia website.

Intellectual Property Lawyers provide legal advice, prepare and draft legal documents, and conduct negotiations on behalf of clients on matters associated with protecting intellectual capital, utilising patent law, copyright law and licensing. Patent attorneys secure and help to protect the granting of patents for their clients. Patents are legal rights that are granted to the inventors of novel technical processes and commodities, securing exclusive rights to their inventions for up to 20 years.

ANZSCO ID: 271214

Alternative names: IP Lawyer

Specialisations: Trade Mark Attorney, Patent Agent,
  
Knowledge, skills and attributes

• Meticulous attention to detail

• Independence

• Ability to explain complex information clearly and concisely

• Good communication skills

• Sound scientific and technical knowledge

• Good IT skills

• Analytical skills

(Source: Your Career)

Duties and Tasks

• Receives written information in the form of briefs and verbal instructions concerning cases from solicitors, other specialist legal professionals and clients.
• Provides advice and written opinions on points of intellectual property law.
• Confers with clients and witnesses in preparation for court proceedings.
• Draws up pleadings, affidavits and other court documents.
• Researches statutes and previous court decisions relevant to cases.
• Reading descriptions and discussing details of inventions with clients
• Undertaking searches to establish that inventions are novel
• Producing detailed legal descriptions of inventions
• Submitting, defending and negotiating patent applications
• Outlines the facts to the court, calls up and questions witnesses and addresses the court to argue a client's case.
• Provides opinion on complex intellectual property issues.
• May draw up or settle documents.
• Interviews clients to determine the nature of problems, then recommends and undertakes appropriate legal action.
• Keeping up to date with intellectual property law
• Prepares cases for court by conducting investigations, undertaking research, giving notice of court actions and arranging the preparation and attendance of witnesses.
• Prepares and critically reviews contracts between parties.

Education and training/entrance requirements
  
You need a university degree in law to work as an Intellectual Property Lawyer. Having an additional degree in a science or engineering discipline may be advantageous if you plan on specialising in patents.

(Source: Lonestar Patent Services)

Patent attorneys assess whether inventions or designs are innovative or new, and therefore eligible to be patented. Patent attorneys carry out similar roles to trade mark lawyers, although patent attorneys do not always have legal qualifications.

Trade mark lawyers provide representation and advice in relation to trade marks and other forms of intellectual property such as copyright, designs, and domain names,

Intellectual Property Lawyers provide legal advice, prepare and draft legal documents, and conduct negotiations on behalf of clients on matters associated with protecting intellectual capital, utilising patent law, copyright law and licensing.

ANZSCO ID: 271214
  
Specialisations: Patent Attorney, Trade Mark Attorney, Trade Mark Lawyer,
   
Knowledge, skills and attributes

To become a patent attorney, you would need:

• an understanding of intellectual property law

• scientific or technical expertise

• excellent verbal and written communication skills

• the ability to explain complex technical information clearly

• an eye for detail and an inquisitive mind

• good research skills

• the ability to structure a precise, coherent argument.

(Source: Larson Patent Law)

Duties and Tasks

• Find out details of the invention, innovation or design
• Search existing patents to check the invention or design is original
• Advise about the chances of being granted a patent for the invention or design
• Write a patent draft - a detailed legal description of the invention or design
• Preparing, drafting and filing your patent in Australia and overseas
• Lodge official documents with IP Australia
• Answer questions from patent examiners
• Advise clients whose patent rights may have been broken
• Represent clients if a case comes to court
• Advise on other intellectual property issues such as design rights, industrial design, copyright and trade marks
• Keep up to date with intellectual property law.
• Receives written information in the form of briefs and verbal instructions concerning cases from solicitors, other specialist legal professionals and clients.
• Provides advice and written opinions on points of intellectual property law.
• Confers with clients and witnesses in preparation for court proceedings.
• Draws up pleadings, affidavits and other court documents.
• Researches statutes and previous court decisions relevant to cases.
• Outlines the facts to the court, calls up and questions witnesses and addresses the court to argue a client's case.
• Provides opinion on complex intellectual property issues.
• May draw up or settle documents.
• Interviews clients to determine the nature of problems, then recommends and undertakes appropriate legal action.
• Prepares cases for court by conducting investigations, undertaking research, giving notice of court actions and arranging the preparation and attendance of witnesses.
• Prepares and critically reviews contracts between parties.

Many patent attorneys are also qualified trade mark lawyers. In-house trade mark lawyers help preserve or enhance a company's trademarks, including use, registration and protection issues. 

(Source: IP Watchdog)

Working conditions

Patent attorneys typically work standard office hours, Monday to Friday, possibly with occasional overtime to meet deadlines.

You would be based in an office, but may also travel to meet clients or attend court. It is possible to become a self-employed patent attorney, either by taking on freelance work or by setting up your own patent agency.

Education and training/entrance requirements

In order to become a registered patent attorney in Australia, you must first have a bachelor's degree in a scientific or engineering discipline. You do not have to be a qualified lawyer. You must then pass an accredited course of study that satisfies the requirements of registration, be an ordinary resident of Australia, and have worked with a registered patent attorney or been employed practising patent matters on behalf of a company, or been an examiner of patents for at least one year.

The most common method of qualification is to work with a firm of patent attorneys as a Technical Assistant (or TA) while studying to pass the examinations set by the Professional Standards Board for Patent and Trade Mark Attorneys.

A law degree is needed to work as an Intellectual Property Lawyer. Some workers who specialise in patents have an additional degree in a science or engineering discipline.

Trade mark lawyers must be qualified in law. To become a lawyer you usually have to complete a degree in law at university. To get into these courses you usually need to gain your senior secondary school certificate or equivalent with English. You can also undertake a combined degree in law and another discipline. The prerequisite subjects required for entry into these combined courses also depend on the chosen non-law component..

In order to be eligible for admission to practice law, it is necessary to complete an accredited program of practical legal training (PLT) on completion of your degree. On completion of the required academic and practical legal training you may apply to the Supreme Court in your State for admission as a lawyer.
In some States, you can also become a lawyer by completing an accredited Diploma in Law, followed by a period of practical legal training.

Employment Opportunities

Employment of patent attorneys is projected to grow about as fast as the average for all occupations.

Companies and individuals are increasingly wanting to protect their trademarks and apply for patents, which will create employment opportunities for patent attorneys. Patent attorneys who are also qualified trademark lawyers are likely to be able to find employment more easily, especially if they are self-employed.

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Materials sourced from

CareersOnline [Patent Examiner; ]
CareerHQ [Patent Attorney; ]
My Big Tomorrow [Patent Examiner; ]
Labour Market Insights [Patent Attorney; ]
IP Australia [Patent Examiner; ]
Your Career [Patents Examiner; Intellectual Property Lawyer; ]

 

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