Freehills Patent & Trade Mark Attorneys is a leading Australian patent and trade mark firm specialising in the creation, acquisition and commercialisation of intellectual property (IP).

Our clients include large Australian companies, foreign patent attorneys and companies, universities both in Australia and overseas, small biotechnology start-ups and individual inventors.

We are closely associated with the Intellectual Property teams in the Corporate and Litigation groups of Freehills. The combined IP group at Freehills has a growing team of 16 partners, and more than 50 other professionals, including a team of patent and trade mark attorneys.

What is a patent attorney?

A patent attorney is a member of a specialised legal profession qualified to write, obtain and advise clients about patents.

A patent is a monopoly granted for a new invention, relating to anything from computers and electronics to gene sequences.

Patent attorney areas of practice

Graduates with a science or engineering degree will be introduced to the following areas of practice.

The general legal framework for patents in Australia and overseas

Graduates will gain an understanding of how a patent is obtained, how a patent may be challenged, and what a patent may be used for.

Graduates will be required to consider the requirements for a valid patent, from both a legal viewpoint (such as the concepts of novelty and inventiveness), and from a technical viewpoint in respect of the application of these tests to a given invention. In addition, you will gain a working knowledge of some of the more commonly encountered differences experienced in working with patent systems of other
jurisdictions, including the US and Europe.

Drafting patent documentation

Working in the Patent team, graduates will assist in the preparation of patent specifications, including the claims that define the monopoly sought by clients.

Patent searches

As a graduate, you will experience the process of distilling a proposed invention and formulating a search strategy to look for similar inventions using various international patent databases. You will also assist in analysing other inventions and preparing opinions as to the likely novelty and inventiveness (two basic criteria for a valid patent) of the proposed invention.

Conducting due diligence enquiries

Graduates will assist in compiling patent due diligence reports and in answering due diligence enquiries relating to patents.

Prosecution of patent applications

Graduates will assist in preparing submissions, liaising with patent office examiners, general research and in preparing reporting correspondence to clients during the process of securing patent protection.

Assisting in opposition proceedings

Graduates will assist in the conduct of contentious proceedings, including the compilation of evidence, interviewing of witnesses and preparation of submissions.

Before an Australian patent is granted, it is examined by the Australian Patent Office to determine the patentability of the invention claimed in the application. The process of receiving an examination report, referring the examination report to the client and eventually lodging a response to the examination report is referred to as prosecution.

Typical prosecution involves preparing submissions to the patent office in respect of the patentability of the invention (for example, arguments that the invention is novel and inventive over pre-existing inventions) and, if required, proposing amendments to the specification.

What is a trade mark attorney?

A trade mark attorney is a member of a specialised legal profession qualified to provide clients with assistance in the protection and exploitation of trade marks and associated rights.

A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders. The sign may be a word, letter, numeral, picture, symbol, shape, smell, colour or any aspect of packaging, or any combination of these.

Trade mark attorney areas of practice

Graduates in the trade marks area are encouraged to gain experience in the following areas.

Legal research and advice in relation to trade marks

Graduates will undertake research in trade mark practice and procedure, as well as trade mark law and trade mark-specific cases. Graduates will assist in providing advice to clients in relation to trade mark practice and trade mark law.

Trade mark availability searches

Graduates will assist in preparing trade mark availability searches, which involve conducting searches of the Australian trade marks register and various databases, in order to provide advice on the use and registrability of specific trade marks for clients.

Prosecution of Australian and overseas trade mark applications

Graduates will assist in preparing submissions, liaising with Trade Marks Office examiners, general research and in preparing reporting correspondence to clients during the process of securing trade mark protection.

Conducting due diligence enquiries

Graduates will assist in compiling trade mark due diligence reports and in answering due diligence enquiries relating to trade marks and related rights.

Assisting in opposition and non-use proceedings

Graduates will assist in the conduct of contentious proceedings, including the compilation of evidence, interviewing of witnesses, instructing of investigators and preparation of submissions.

Drafting documentation

This includes drafting documentation of trade mark assignment deeds, trade mark licenses, and settlement agreements.