IP Australia – the government authority responsible for (among other things) examining and granting Australian patents – has just published its Engaging an Attorney Toolkit, an online ‘guide on how, why, what and when to engage your patent attorney.’ The toolkit is the result of a project undertaken in the second half of 2017, with the assistance of external branding and communications consultants, having the aim of dispelling myths and closing knowledge gaps around patent protection. It is intended primarily to assist people and businesses with minimal knowledge and experience of the patent system in preparing to engage with an attorney.In the course of the project, online surveys and interviews were conducted with various stakeholders, including patent attorneys (full disclosure: I was one of the patent attorneys interviewed), to identify what new prospective patent applicants know, do not know, and should know, about the process of obtaining a patent. Naturally, IP Australia is primarily concerned with assisting the public, and is hoping that the toolkit will help to reduce costs and make it easier and more attractive for innovators with limited understanding of the patent system to engage with an attorney. If it is successful, however, the toolkit will also benefit attorneys by creating better-prepared and more knowledgeable clients, reducing the time and effort often required to educate them about what to expect from their attorney, and from the patent system.
It is no secret that I have been a critic of some of IP Australia’s educational resources in the past. Almost exactly one year ago I wrote about its information on ‘what to include in your application’, calling its downplaying of the importance of obtaining professional assistance ‘rubbish’, and suggesting that:
…for the overwhelming majority of prospective applicants, ‘seeking assistance from a patent attorney’ is not something that they ‘may consider’. It is an essential step without which they might as well flush their application fees, and whatever their own time and effort is worth, straight down the toilet!
This might seem harsh, but it was backed by an analysis, based on IP Australia’s own data, of extremely poor outcomes for self-represented applicants when compared with those employing the services of patent attorneys. IP Australia, to its credit, engaged positively with this criticism, and within two months had updated a number of pages on its website with stronger recommendations on the value of obtaining professional assistance and advice.
Compared to this short-term fix, however, the Engaging an Attorney Toolkit is a huge leap forward. Not only does it contain valuable information, in an accessible format, but the very fact that it now exists sends a clear message to prospective applicants about the importance of seeking professional assistance. For the first time, ‘Engaging an attorney’ is now a headline topic on the main page on applying for a patent, along with a link to the toolkit. With just one small caveat (of which, more later) I would have no hesitation, if I were still working as a private-practice attorney, in referring prospective clients to the toolkit in the expectation that it would make the early stages of our engagement run more smoothly.
Overview – A Patent is a Business Asset
The toolkit is divided into 12 sections, each of which fits comfortably onto a single A4-sized page (there is a PDF version, for those who prefer something that they can print out and carry with them). Most of the toolkit is refreshingly free of patent jargon, however the final section is a glossary of common terminology, just in case.The first section covers ‘6 Myths about getting a patent’, including ‘I can get a worldwide patent’ (you cannot), ‘a patent attorney will steal my idea’ (no, they will not), and ‘a patent will automatically make me lots of money’ (no, patents are not magical). All six are misconceptions that I have heard many times over the years, so the toolkit is doing everyone a favour by clearing the air about these myths from the outset.
The section ‘Do I need a patent?’ contains a flow chart to assist potential applicants not just in determining whether they may have devised something patentable, but also in starting to think about whether obtaining a patent is the right choice. Indeed, my favourite thing about the toolkit is its strong emphasis on the fact that a patent is a business asset, and that whether to dedicate time, effort, and money to obtaining a patent is a commercial decision.
The section ‘A patent should fit with your business plan’ opens with the statement that ‘A patent is above all a commercial tool.’ The section ‘Preparing to see your attorney’ contains a ‘crib sheet’ (a fillable PDF form) which includes more questions about the prospective client’s business and commercialisation plans than it does about the invention. In my experience, this is the correct emphasis. I have never met with a new client who is not enthusiastic about their invention and able to tell me all about it in great detail, but I have met plenty with absolutely no idea how they are going to make money from their invention, or where a patent might fit in to their business plan.
Searching
The toolkit includes sections on ‘Patent searching’ and ‘How to search patents yourself’. I am a long-time sceptic when it comes to inexperienced inventors conducting their own patent searches, although the development of smarter and more user-friendly search tools like Google patents and The Lens is certainly helping people to obtain some useful results by themselves. Even so, conducting a comprehensive global patent search remains challenging without commercial databases, English-language abstracts, and a good knowledge of patent classification systems. These days, however, an initial search conducted by the inventor is likely to be a better starting-point than it was only a few years ago.One small criticism I would make of the information on searching is its discussion of infringement. As patent attorneys and professional patent searchers know, novelty/prior art searching and infringement searching are very different things. And telling the target audience of the toolkit (i.e. new and inexperienced potential users of the patent system) to ‘pay attention to the claims’ of the patents they find is unlikely to be of much practical assistance. On the other hand, it is not unknown for novelty searches to unearth infringement risks, so to this extent the advice is useful.
Case Studies
The toolkit includes three case studies. The first of these, about the experiences of the inventors of the ‘Mango Stick’ – a device for holding a mango firmly by the stone to minimise sticky hands – is unusual for these types of educational materials in that it is not a success story. While the Mango Stick was no doubt an innovative idea, there were problems with cost-effective manufacturing, and ultimately insufficient market demand. The case thus stands as ‘an example of how inventors need to tie their patent strategy to the commercial viability of their invention, and consider giving up patent protection if it doesn’t look as if they’ll be able to make money from their invention.’The second case study is about ‘How patent attorneys and clients work together’. There is one Australian firm, and one patent attorney in particular, who will doubtless be delighted with the free publicity provided by this case study. I am sure that IP Australia will have given considerable thought to the pros and cons of actually naming the firm and attorney involved. Since one aim of the toolkit is to demystify engaging with a patent attorney, using a real case and putting a ‘human face’ on the process is obviously advantageous. Equally obviously, a case with a productive client-attorney relationship was required, meaning that the client was inevitably going to say positive things about their attorney. However, a bit like gaining positive coverage on a news or current affairs program on the national public broadcaster, this is advertising that money literally cannot buy!
[Update, 18 February 2018: Since this article was originally published, IP Australia has amended the text of the second case study such that it no longer names the attorney firm.]
This is the source of the reservation that I might have in referring prospective clients to the toolkit if I were still working as an attorney in private practice. Some attorneys may be reluctant to direct a potential client to materials that they might regard as promoting the services of a competitor, especially if the technical field of the invention is similar to that of the inventor in the case study. The whole point of the toolkit is that it is designed to assist individuals and small businesses prior to formally engaging a patent attorney, when they are still presumably undecided about which attorney or firm they will choose. At one level, of course, this is not IP Australia’s concern. On the other hand, I would have thought that it would want to get the entire Australian patent attorney profession on-side with publicising this useful resource.
The final case study is a ‘Success Story’ about an invention called Stormseal – a polyethylene film that heat-shrinks to cover damaged roofs or walls until permanent repairs can be made. Oddly, given that the toolkit is directed to the process of engaging with a patent attorney, there is no mention of any attorney in the case study (and, having taken a look at the history of a couple of Stormseal applications, I suspect there are reasons for this omission). However, the main point of this case study appears to be the importance of having a patent strategy that is aligned with a business plan – in this case, through growth in Australia followed by expansion into overseas markets.
Conclusion – Four Stars!
Overall, I would give the Engaging an Attorney Toolkit four out of five stars. Notwithstanding my relatively minor reservations about the second case study, and the discussion of infringement, it is one of the best resources IP Australia has developed, and a big improvement over some of the dense and jargon-rich information on preparing and filing patent specifications that has been prepared in the past (although, of course, this information is still available for those able to make good use of it).Personally, I believe that getting inventors to talk to a patent attorney before they make some unfortunate and irreversible error is a far more worthwhile and valuable objective than trying to help them prepare their own patent specifications. I hope that the Engaging an Attorney Toolkit is successful in achieving this outcome. It will be interesting to watch the statistics over the next few years to see whether there is any reduction in the proportion of self-represented applicants in Australia.
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