Australia: From Researcher to Patent Attorney

Last Updated: 7 October 2016

Mike Zammit reflects on the different perspectives of IP for researchers, IP coordinators and patent attorneys.

In my career, I have spent time working as a researcher, an IP coordinator, and more recently as a patent attorney. Together, these roles span the process of IP generation and protection – the researcher spends time on generation, the attorney on protection, and the IP coordinator participates in each activity. Experiencing these different perspectives has changed my understanding of IP.

Different roles – an overview

Researchers may undertake fundamental research directed at explaining the world around us, the purpose often being the explanation itself. There are direct benefits of this research, for example to other scientists, and indirect benefits can also flow, such as the pure research into the structure of the atom that led to nuclear power and silicon chips. Applied research is more focused on finding answers to specific questions, which are typically directed at solving problems in the marketplace, such as making a process more efficient or cost-effective, addressing a polluting or less sustainable process, or product development generally.

IP coordinators work with senior in-house IP counsel, business development managers and outside IP service providers to protect new and existing IP assets locally and abroad to meet business IP needs, including providing IP advice and education to researchers (see box page 27).

Attorneys advise on IP generally, and assist IP owners to register, maintain and enforce their property (see box).

The researcher's view

In my experience, some researchers perceive IP as a 'necessary evil', and are often in the dark about IP/legal matters, or possible business uses of IP. There are not always easy answers to questions such as: 'Could/should the development be patented?', 'What other forms of IP should be pursued?', 'What other pre-existing companyowned IP is there?' and 'How do I leverage that IP into new products under development?'. Often, valuable time and money is also spent 'reinventing the wheel'.

In terms of the IP coordinators and attorneys in action prior art, patent prior art searches, in particular, can be difficult to conduct and the output can be difficult to understand, so that there can be a tendency to ignore patent prior art because it is in an unfamiliar form.
IP coordinators and attorneys in action

IP coordinator

  • assessing invention disclosures for technical merit and value according to strategic business direction
  • facilitating patent review meetings to priorities inventions for patent filings
  • coordinating/conducting invention brainstorming sessions
  • working with and managing outside counsel in connection with the filing and prosecution of patent, design and trade mark applications
  • identifying and participating in any out- and in-licensing opportunities
  • providing IP support with respect to financing, merger and acquisitions
  • providing IP training
  • defending IP assets.

Attorney

  • advising on IP, and helping IP owners apply for, register and maintain their property both locally and abroad, e.g. drafting patent specifications, advising on whether a development is patentable subject matter, and whether it is new and sufficiently inventive enough to justify a patent, lodgement of applications with government bodies and guiding the application through the process
  • assisting in technology transfer, e.g. by licensing
  • conducting IP audits, e.g. organisations, products, systems
  • conducting litigation both locally and abroad
  • assisting clients manage their IP portfolios, including advising on IP held by others and the risks in infringing, or for working around that IP.

Many 'green' researchers are uncertain of what to invent, how to invent, how to invent around or in front of others, how to stand on the shoulders of other inventors, and how to prevent others from inventing in front of, or on top of, their own inventions. Answers to these questions often come from a deeper understanding of IP and/or a better commercial understanding.

In terms of the prior art, patent prior art searches, in particular, can be difficult to conduct and the output can be difficult to understand, so that there can be a tendency for researchers to ignore patent prior art because it is in an unfamiliar form. However, it is well understood that ignoring the patent literature could be disastrous if one does not want to reinvent the wheel. The significance of different patent documents can also cause some uncertainty (e.g. continuation, divisional, provisional, complete). Additionally, to those who are inexperienced or untrained, patent prior art documents can sometimes be indecipherable, with frustrating amounts of repetition that obscure the invention, and without all the scientific information provided for the invention to be repeatable.

Researchers are also under pressure to invent or develop a new product and get to market quickly. There are competing pressures on time and budget and practical matters such as being forced to use existing equipment or resources, which may not be ideal. Cross-'fertilisation' of the IP generated by different research teams is also sometimes not explored and exploited. Other options such as licensing-in technology or potentially invalidating a 'blocking' patent are not always considered. In an academic setting, there is often the added pressure to publish in order to justify grants, and patents are viewed as second-tier publications because they are not peer reviewed and do not count towards publication metrics.

The IP coordinator's view

The IP coordinator's role starts with a deep understanding of the business strategy so that informed IP decisions can be made. For example, the business strategy should assist with answering questions such as: 'What has been developed that could be protected?' and 'Of the IP that could be protected, what should be protected?' Of course, it must be a business decision on what gets protected, because an organisation simply cannot protect everything invented, especially due to limited resources. And of course a patent does not guarantee commercial success; rather, it is a launching pad for commercial activity. Generally speaking, IP protection should strike a balance between what the market wants (i.e. 'the pull'), what the business capabilities can provide (i.e. 'the push') and what the competition is offering (i.e. 'the clash').

The IP coordinator will also need to grapple with questions about when, where and what to file. The 'what' is deciding on which inventions to pursue and which not to pursue; the 'where' (to file for protection) is usually dictated by factors such as the jurisdictions in which the major markets are located and where manufacturing will take place. Licensing possibilities may also affect the decision. The 'when' is a more complex question to answer. An applicant should file for protection when a new product may have a commercial advantage (to the applicant or its competitors), but before any non-confidential disclosure or commercial exploitation. There is also a balance between not filing too early (as there may be insufficient enablement; deadlines are triggered, causing costs that the applicant is unable to meet at a time when the product is not fully developed; or potential follow-up applications on improvements may be required), and not filing too late (the competitor could file first, or the invention is superseded).

It is very likely that the IP coordinator will be faced with highly relevant IP owned by third parties. There are essentially five options to consider.

  • Avoid it: Work around the IP at project design stage.
  • Ignore it: Ascertain the likelihood of being sued.
  • Licence it: Attempt to negotiate a licence early with the patentee to use the technology.
  • Attack it: Ascertain the likelihood of invalidating the patent and having it removed from the Patent Office register.
  • Buy it: Negotiate the purchase of the relevant IP or competitor's company.

There are many other responsibilities, such as providing training and support to assist each team with their IP requirements, including watching competitors and understanding which companies may see your IP as infringing theirs. It is also important to continuously manage the content of the IP portfolio to ensure that it has continuing relevance to commercial strategy, comprising reviewing important IP assets to ensure that they remain valid and useful. Outside counsel must be managed, including decisions on when to get them in, what information to provide, and what to ask, while simultaneously seeking to minimise IP costs where possible, especially since there is usually a fixed budget.

The attorney's view

Attorneys are trained to think slightly differently from researchers. For example, where a researcher will try to explain something that is unknown and will postulate theories, an attorney generally thinks in a problem–solution manner, trying to identify a clear 'inventive step'. Where an academic will generally want to publish everything, an attorney will endeavour to include the best method and an enabling disclosure of the full width of the claims, but needs to be careful of saying too much as this could stand as prior art against later applications.

In the process of interviewing inventors, attorneys can also often identify overlooked or 'dismissed' inventions that may be commercially significant. More often than not, researchers can suffer from '... what I've developed is good, but it's just obvious ...' syndrome, probably because they deal with the technology day-in-day-out and become somewhat blasé about it. It is also common for a researcher to only consider one form of IP protection, whereas the concept may be protectable via a number of forms of protection – it is the attorney's responsibility to identify these possibilities.

Although an attorney must have some technical expertise in the same or a related field of art as the invention, the attorney understands that the inventor has a deeper understanding of the prior art, and therefore comments from an inventor on prior art documents raised in an examination report are usually invaluable. Sometimes, however, the invention will stray from the field of expertise of the inventor, in which case the attorney will need to cover any gaps in technical knowledge. Further, while the attorney will have a view on what claim amendments may be required during prosecution, the input of the IP coordinator is extremely important to ensure that the resulting IP is aligned with the business needs.

... where a researcher will try to explain something that is unknown and will postulate theories, an attorney generally thinks in a problem–solution manner, trying to identify a clear 'inventive step'.

Generally speaking, the researcher is focused on solving a relatively narrow problem in one field of art. It is the attorney's role to think broadly and attempt to expand the scope of the IP as much as realistically possible when drafting the application in order to attempt to maximise the commercial value of the resulting IP. (Typically the broader the claim, the more valuable the IP, although in crowded fields of art narrow IP protection can still be quite valuable.) An attorney is also concerned with ensuring that the entire supply chain is protected. For example, in addition to directing claims to the article itself, the attorney should ensure that claims are drafted to protect the components of the article, and the use of the article (considering the answer to questions such as: 'What is the context of its use?', 'How is it used?' and 'How might it be modified?'). It is also important to consider the time horizon: what could the invention be used for in 10, 15 or 20 years' time? Alternative uses in related fields of art should also be considered, and different permutations of the invention. For example, what happens if the order of the features is rearranged, or if a feature is removed, or an equivalent is used instead? It is especially important to consider how the claims are drafted to increase the likelihood of catching an infringer. These considerations are not always at the forefront of the researcher's mind.

The attorney has specialised training in technical legal matters, such as drafting patent specifications, freedom to operate advice, and challenging the validity of a patent. Attorneys must also have an excellent knowledge of the patent laws of our major trading partners, and in particular the countries that are of commercial interest to the applicant. This can be a challenge, especially since laws change frequently.

There are many overlapping responsibilities between the IP coordinator and the attorney. However, where there is no IP coordinator, the attorney will be expected to step into the IP coordinator's shoes, although clearly in this case it will be the researcher's responsibility to be on top of the commercial aspects of the invention and understand the relevant marketplace.

A holistic approach

Each of these IP roles is essential for the generation and commercialisation of technology. IP coordinators and attorneys operate at the interface between science, law and commerce, and therefore have especially challenging and rewarding roles to play. However, teamwork is paramount to a holistic approach to IP generation, protection and management.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Australia
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Australia
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions