Questions Frequently Asked Of Patent Attorneys

1. Can I get advice on the telephone?

• In most cases, we cannot give advice on the telephone without first gathering full information from you, and examining documents, at a face-to-face meeting.
• When we have a telephone consultation with a client, we charge for our time.

2. Can you come to our factory to see our invention?

• We will travel to your factory for a consultation. Depending on the time taken, we may charge for our travel time.
• Depending on the nature of the invention, it may be more efficient with our time and your time if you first supply us with copies of any engineering/manufacturing drawings that you have of your invention.
• In some cases it may be necessary for us to send a draftsman to your factory to prepare the drawings that are required for a patent application.

3. What material do I need to give to you so that you can prepare a patent application?

• We can supply you with a questionnaire that sets out the matters on which we need information from you to prepare a patent application.
• A patent application must, in most cases, also include drawings which show the invention and which illustrate how it works. These drawings are markedly different from manufacturing drawings. We can arrange for the preparation of these drawings for you.

4. Can I get a patent for my invention?

• Your invention has to be new enough before you can get a patent. In some cases we will know about previous inventions that are close enough to your invention to stop you getting a patent. In most cases, it will be necessary to do a search to find out if your invention is new enough for you to get a patent for it.
• There are also some things that, as a matter of public policy, cannot be patented. An old example is the case of the 'exploding safe'. The British Patent Office refused a patent for a safe which was designed to explode and kill any safe-cracker.
• The criteria for patenting of an invention also vary from country to country. For example, most countries will not grant patents for business processes but there are a few countries which will.

5. How much will it cost to get a patent?

• Costs depend on whether you want an Australian patent only, or whether you also want patents in foreign countries.
• In Australia, the costs and procedures depend on whether you want an 'innovation patent' (which lasts a maximum of 8 years) or a 'standard patent' (which lasts a maximum of 20 years).
• It is only in rare circumstances that we recommend that you get an innovation patent, rather than a standard patent.
• With any type of patent, there are costs at different stages during the life time of the patent application/patent. We can supply you with a separate information sheet that sets out a detailed description of the life cycle of a patent application and patent, including estimates of costs at various stages of the life cycle. Those costs are estimates and not firm quotes, based on the assumption that the invention is a straightforward mechanical gadget.
• Costs of patenting overseas vary greatly from country to country, and also vary with changes in foreign currency exchange rates, official fees charged by Patent Offices, and fees charged by patent attorneys overseas.

6. Do I need a prototype of my invention in order to get a patent?

• No, but you need much the same amount of information as would be shown by a prototype. The Australian patent application process requires that your provisional application "describe the invention". An Australian complete application must "fully describe the invention, including the best method of performing the invention known to the applicant". Although these two requirements are worded differently, the state of the law established by the courts is that there is little difference between the two tests. You must also keep in mind that in most cases you will be using the Australian provisional application to establish a "priority date" in other countries such as the United States, Japan and the European community. Each of those jurisdictions requires priority documents to include far more information than was traditionally included in an Australian provisional application. We recommend that you discuss the state of your invention with one of our professional staff so that they can advise you on whether or not you have enough material for preparing a patent application.

7. Why do I need to apply for a patent when I can use confidentiality agreements?

• A confidentiality agreement is effective only against the parties who have signed it. A confidentiality agreement is not effective against a third party who develops the same invention as you do but quite independently of you. It is also the case that many reputable corporations will not enter into confidentiality agreements. This is because doing so involves a "catch-22". You will appreciate that a company will be reluctant to sign a confidentiality agreement unless it first knows what the information is that you will be disclosing to them. On the other hand you will be reluctant to disclose any information to the company until it first signs a confidentiality agreement. There is also the consideration that, once you have disclosed information to a company that has signed an agreement, it may properly have to say that its own research and development groups were working on the same invention or in the same general area.

8. Can you prepare a licensing agreement for me?

• We can certainly help you with licensing matters. Watermark can assist you to find a licensee, negotiate the terms of a licence agreement and help you successfully manage your licensing relationships.

9. What is my invention worth?

• There are three basic methodologies for valuing inventions. The first, as with any resaleable asset (such as a building or land) a patent can be valued by comparing it with sale values of comparable patents. Secondly a patent can be valued by arriving at a current value by discounting future projected payments of royalties. Thirdly a patent can be valued by estimating how much it would cost to develop an euivalent invention. The actual process of valuation of an invention is outside the core business of a patent attorney and we would refer you to a specialist accountant or valuer.

10. I have received a letter from a solicitor which claims that I am infringing another person's patent/trade mark/design/copyright. What should I do?

• It is important that you do not prejudice your situation by for example replying to the solicitor by way of telephone or letter in a way that discloses information that could be used against you. The letter that you have received probably gives you a short time to reply. To give you advice on how to reply we would need a copy of the letter that you have received and we would need to discuss the situation with you in detail. If you receive such a letter of demand we recommend that you immediately contact a professional adviser for advice.

11. How do I do a patent search?

• We always recommend that comprehensive searching be done before a patent specification is prepared. Watermark has an experienced team of searchers with backgrounds in a variety of technologies.  For information on Watermark's searching capabilities, please click here.  Estimates of search costs can be provided once we have detailed information about your technology.
• If you prefer to do some preliminary searching yourself, the US Patent Office and European Patent Office databases are comprehensive and available free on line.
• The Australian Patent Office databases are not as comprehensive as those of the US and European offices.  It should also be noted that Australian patent information is stored in two separate databases; one which holds records for applications filed since 2002 and the other holding records for applications and patents filed from 1975 to 2002.  To search patents pre-dating 1975, manual searching of microfiche or paper records may be conducted at the state offices of IP Australia.

12. What marking should I put on my product to show that it is patented?

• In Australia, if you have filed a patent application you can mark a product with any word(s) that implies that an application has been made in Australia (eg "patent applied for" or "patent pending").

   

  Caution should be exercised when marking a product in relation to a provisional patent application. It is an offence to use the words "provisional patent" on a product without indicating that it is an application. That is, the words "provisional patent" are
  

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