What does a patent attorney do? How they differ from a lawyer

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Most of us have heard the term attorney or lawyer used to describe a legal professional and typically it is assumed these terms are interchangeable.

However, this is not always the case - especially in Australia.

While here the term lawyer can be used to refer to any individual trained to practice law, attorney is more specific. It instead refers to someone who has trained in a particular field of law such as a patent attorney.

Just to confuse things further, attorneys often act as lawyers in that they provide legal advice, but not all lawyers can perform the work of an attorney and vice versa.

So what does a patent attorney do and what do these differences in terminology mean in practice? Let's take a look.

In Australia, the Patents Act 1990 recognises that registered patent attorneys are not lawyers.

However, they are approved to provide a wide range of legal advice regarding all areas of intellectual property (IP). This includes patents, trademarks, design rights, plant breeders rights and copyrights.

Just as it would be with a lawyer, this advice is privileged or confidential and several legally binding processes can be performed by a patent attorney.

Typically, patent attorneys hold additional qualifications in a technical field such as engineering alongside their legal training in intellectual property (which is typically a masters degree in intellectual property). This is important as patent attorneys are typically matched with the technology type of an invention that is brought to them by a client. In this way, patent attorneys are better equipped to understand the invention and its implications.

One key difference between the two is that while a lawyer is permitted to represent you in court, a patent attorney is not. Patent and trade mark attorneys are permitted to represent clients before the patent and trademark office, and in hearings before the patent and trademark Commissioner. Likewise, a lawyer who is not a patent attorney is not entitled to prepare or draft patent specifications, or file them for clients.

Both patent lawyers and patent attorneys play a very specific and important role within the field of IP legislation, but their training and licensing greatly differ.

Using a unique combination of technical and legal skills, a registered patent attorney is entitled under Australian law to:

An IP lawyer, also known as an IP solicitor or intellectual property lawyer is generally only engaged when a matter proceeds to court. This is because, in Australia, only a lawyer or solicitor may represent you in a court of law.

While an IP lawyer may be able to assist with litigation regarding infringement or other legal issues outside of court, a patent attorney is often better suited as this is their only area of legal practice.

As IP lawyers are typically not trained in the technical aspects of patents or other types of IP, they may not be across nuances in the law.

This is also why they are excluded by law from performing many of the services that a patent attorney offers such as patent drafting.

Ultimately, a patent attorney offers more specialised expertise in patents and a broader range of services for protecting your valuable IP.

Depending on your situation and needs, a patent attorney is often better placed to assist and can be a more affordable option than engaging a lawyer. With their support, you may even be able to avoid court, saving you time, money and stress.

If you're ever on the hunt for a patent expert in future, now you know just how different an attorney is from a lawyer and why choosing a patent attorney is often the wiser move.