Atticus Finch. Annalise Keating. Matt Murdock. Ally McBeal. Harvey Specter.
Pop culture is replete with famous attorneys delving into crime scenes and striding about operatically in courtrooms. They defend the innocent and prosecute the guilty (or sometimes the other way around). They practice widely in all forms of law, from criminal to maritime, real estate to – you guessed it – intellectual property.
There is one more thing that almost every fictional attorney you can bring to mind has in common: they are all American. As Australians, we are bathed in media content coming from the United States in particular (for example, from 1984 to 2022 47% of all movies released in Australia originated in the USA1). So, it’s no surprise that some terms might gain meaning in the popular imagination that isn’t present in a professional setting.
In Australia, an attorney is a specialist in intellectual property, something quite different and much more specialised than we tend to see in movies or television. What is called an attorney in the US would more generally be called a solicitor, barrister or lawyer in Australia.
An Australian attorney is more specifically a patent attorney or trade mark attorney (or both). They are not a lawyer (or rather, they might be, but in the same way your plumber may also be a carpenter). The Australian Patents Act 1990, section 2002, describes a registered patent attorney as someone entitled to prepare documents and transact business with respect to that act only. A trade mark attorney is empowered similarly with respect to the Trade Marks Act 1995.
Both Acts state that the attorneys can provide intellectual property advice but cannot act before a court. An attorney specialises in the legislation, documents, search and arguments to do with filing, registering and defending your IP – patents and trade marks as described, but also designs, plant breeder’s rights and related matters – outside of the courts themselves. Typically, an attorney will work with an IP barrister if an IP matter comes before a court.
So, what can an Australian patent and trade mark attorney do? They can help you write your provisional patent application and get it filed in Australia and around the world. They can search for prior art and the activities of potential competitors and infringers. They can argue your case to the patent or trade mark examiner to make your protection as strong as possible.
There are similarities between patent and trade mark attorneys and lawyers. At an abstract level, when dealing with an attorney in Australia, you could think of them as a very specialised lawyer. After all, they are legal experts, and all of your conversations, documents exchanged and so on are privileged and confidential in the same way they would be with your lawyer.
Just don’t ask us to write a will or get you out of a speeding ticket. For that, you need a lawyer. Not an attorney.
Got questions about IP in Australia or New Zealand? Contact one of our attorneys at mail@mbip.com.au or call 07 3369 2226 for a free initial consultation.
1 Films screened – Industry trends – Cinema – Fact Finders – Screen Australia