Lawyer Monthly Magazine August 2020 Edition

commercial use of the invention prior to filing a patent application. In terms of the content of a patent application, it is important to clearly describe the key features of the invention and the advantages that these provide. It is also necessary to describe the invention in sufficient detail to allow others to make and/or use the invention. All potential variations of the invention which use the idea behind the invention should be covered (not just the currently proposed form). The inclusion of these potential variations is critical to not only provide potential for a broader scope of protection but also offers flexibility to amend the application to deal with issues that may arise through the application process, including during examination before the Patents Office. In addition, it is important not to deliberately omit any key aspects or features of an invention from a patent application. This is contrary to the requirements of the patent system to disclose the invention to the public in return for a period of exclusivity to the patent owner. Failure to make a full disclosure may ultimately result in an invalid patent. How important is a patent attorney in this process? A patent is balanced between the requirements for obtaining a valid patent (i.e. the invention described in the patent must be new and inventive), and those for defining a boundary of sufficient scope to cover the invention and potential copycats. It is the work involved in achieving this balance that defines the value of patent attorney services. In the same way that an inventor is an expert in their chosen field, a patent attorney is an expert in patent law and practice. A patent attorney can draw on their knowledge and experience of the patent system to frame a patent application for maximum benefit for the inventor. As in any specialist field, there are many subtleties to the patent system. And as the saying goes – the devil is in the detail. Without an in-depth knowledge of these subtleties, a patent application is unlikely to be fit for purpose and, in many cases, would likely give away too much ground to competitors. A patent attorney will work collaboratively with an inventor to properly understand the invention and draw out the core concepts and the proposed strategy for commercialising the invention. The ability of patent attorneys to work in such a collaborative manner on often complex inventions arises from the fact that patent attorneys typically hold tertiary qualifications and have relevant industry experience in a scientific or engineering discipline. The technical background of a patent attorney is supplemented by study and practical training in intellectual property laws and practice, including those relating to patents. It is this combined technical and legal skillset that enables patent attorneys to prepare patent applications of significant commercial value. In what ways do you determine an appropriate scope for protection? Does this impact the inventor’s application? To properly frame a patent application that will offer the maximum potential WWW.LAWYER-MONTHLY.COM | AUG 2020 30 AN INTERVIEW WITH SHELSTON IP “In essence, the statement of invention summarises the core or underlying concept of the invention and thus foreshadows the scope of protection that a patent applicant is seeking to obtain.” Failure to make a full disclosure may ultimately result in an invalid patent.