Obtain legal advice on enforcement options

This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.

What is it?

Getting advice from an IP lawyer or, where relevant, a trade mark or patent attorney can help you navigate the complex system of IP enforcement.

Depending on your situation, it may be necessary to seek advice from more than one type of IP professional specialising in different IP rights in your IP portfolio and different types of enforcement actions (such as court action, which would require a lawyer). 

If you already have a trusted lawyer, trade marks or patent attorney, you might talk to them about finding the right IP professional for your circumstances.

Alternatively, you could search the Trans-Tasman IP Attorney Board  register to find a trade marks or patent attorney, or contact your local law society to find a specialist IP lawyer. 

How about other types of IP professionals?

The term IP professionals refers to a range of experts who can help you plan and manage your business in relation to IP, including legal professionals. If you are seeking advice on how to enforce your IP rights, and what might be most appropriate to your situation, you should seek it from an IP lawyer or other relevant legal professional.

If you wish to obtain support for other IP-related aspects of your business, you may wish to engage services provided by non-legal IP professionals such as:

an accountant who specialises in IP marketing or commercialisation
a brand consultant
a franchise and export consultant
a management consultant
IP search firms
IP monitoring service providers
Government business support.

What are the benefits?

In most cases, engaging an IP lawyer or IP attorney is likely to reduce the risks you may encounter in enforcing your IP rights.
IP lawyers can provide a wide range of legal services and develop a holistic IP enforcement strategy suited to your IP and business goals, and IP attorneys can provide specialist IP advice in their areas of expertise such as trade marks or patents.
They have the knowledge, training and experience to guide you through a dispute or a conflict which can be highly stressful and draining.
They have an in-depth knowledge of relevant legislation and industry practices surrounding IP, with the ability to leverage both appropriately and proportionately.
They are bound by codes of conduct, professional standards and ethical obligations to act in your best interests, stay away from conflicts of interests and unethical conduct.
They are able to recognise common issues which come up and refer you to other professionals if and when needed.

What are the risks?

Most IP lawyers and IP attorneys have different specialties and may be more effective in their particular field of expertise. For instance, an IP lawyer may be highly experienced in dealing with trade marks, but not so much in patents, or vice versa. Only an IP lawyer can conduct proceedings in a court so, if you engage an IP attorney rather than an IP lawyer, they would need to refer you to an IP lawyer if you find you need to go to court to enforce your IP rights.

What are the possible outcomes?

The outcomes of seeing an IP lawyer or IP attorney depend heavily on your individual circumstances.

What might the costs be?

The total costs of engaging an IP lawyer or IP attorney will depend on factors such as their fees and other costs, and the complexity of the matter. 

For trade marks and patent attorneys, you can expect an average fee of: 

$400-700 per hour for a patent attorney .
$1,000-2,000 total for a trade marks attorney  to file and register a single trade mark in one or two classes of goods and services.

Fees for IP lawyers vary widely depending on factors such as their level of expertise, the size of the firm they work for, and where they are based. If an IP lawyer needs to engage a barrister to represent you in court proceedings, this will add to the costs involved.

Some IP lawyers and IP attorneys offer a free initial consultation to assess what services you need and provide you an estimate of costs moving forward.  

It can be a good idea to ask for an indication of how much the entire process may cost during your first meeting. IP lawyers have a professional obligation to provide you with an upfront estimate of their fees and costs.

How much time might be involved?

Your first consultation is likely to take place shortly after you contact your IP lawyer or IP attorney. However, the total length of time for engaging their service will vary greatly depending on what steps you decide to take or the services you decide to use.

How much is this used?

IP Australia does not have access to information about how many, nor for which reasons, businesses engage IP lawyers and IP attorneys.

Who can use this?

Anyone.

What do you need to proceed?

Do your homework before you meet 
Your time is important and an expert's time can be expensive, so it's useful to prepare before you meet with IP lawyers or IP attorneys. Consider: 

See information about what counts as infringement

Learning more about IP  and your specific IP type. Having some basic knowledge will help you to better understand the professional's advice and recommendations.
Researching what your suspected infringers or competitors are doing in the market (including where they might be based and whether they have registered any IP rights) and being ready to share the results. This will help your IP lawyer or IP attorney to provide you with advice.

Finding an IP lawyer or IP attorney
To find an IP lawyer, you can search on your State or Territory’s law society website:

To find a registered Australian trade marks or patent attorney, you can search the Trans-Tasman IP Attorneys Board directory: Find an IP attorney or firm | Trans-Tasman IP Attorneys Board.  

Tips for choosing an IP lawyer or IP attorney
Here are some suggestions for choosing an IP lawyer or IP attorney for your IP: 

Ask for recommendations from other business owners or members of your industry association.
Ask how much you'll be charged and how long the service will take.
Don't assume that all lawyers or IP attorneys specialise in the type of IP that you have.
Try to determine if you can establish a trusting relationship. If you don't feel comfortable sharing relevant information, it could be difficult for an adviser to work in your best interests.

If you think you may need to go to court to enforce your IP rights, speak to an IP lawyer.