The Trans-Tasman IP Attorneys Board (the Board) maintains the legislative regimes you must meet or acquire, if you wish to become a registered trade marks attorney in Australia or patent attorney in Australia and New Zealand. It is compulsory for anyone working as a patent attorney in Australia and New Zealand to be registered with the Board. It is not compulsory to be registered to submit trade mark applications to IP Australia but there are privileges extended to people who do register as trade marks and patent attorneys, including the important rights to practice and to title.
Right of practice
Trade marks attorneys
Registration is not compulsory for practice in trade mark matters. Anyone has a right to submit trade mark applications to IP Australia on behalf of themselves or another person.
However, only registered trade marks attorneys can legally practise as trade marks attorneys and obtain the rights attached to registration.
Only registered trade marks attorneys, patent attorneys, legal practitioners or people with the right to practise as trade marks agents under the Trade Marks Act 1995 can practise as trade marks agents. [Sub section 156(1) of the Trade Marks Act 1995].
Offences - trade marks attorneys
People describing themselves as trade marks attorneys or trade marks agents when not legally entitled, will incur a penalty of $5400.
Office holders of body corporates found guilty of the offence can individually be liable for $5400 fines where they were knowingly party to an offence.
You are not permitted to carry on business as a patent attorney in Australia or New Zealand unless registered as a patent attorney or a legal practitioner (within the terms of the legislation). [Sub section 201(1) of the Patents Act 1990]
You are considered to be carrying on a business as a patent attorney if you undertake to do, on behalf of someone else, any of the following in Australia or New Zealand for gain:
- apply for or obtain patents in Australia, New Zealand or elsewhere
- prepare specifications or other documents for the purpose of the Patents Act 1990 (Cth), the Patents Act 2013 of New Zealand, or the patent law of another country
- give advice (other than advice of a scientific or technical nature) about the validity or infringement of patents.
Legal practitioners are prohibited from preparing specifications or documents relating to specifications unless:
- the practitioner is acting under instruction of a registered patent attorney or
- the court has directed the amendment. [Section 202 of the Patents Act 1990].
Patent attorneys are not authorised to prepare documents to be issued from or filed in a court or to transact business, or conduct proceedings, in a court. [Section 200 of the Patents Act 1990].
Offences - patent attorneys
Penalties are prescribed in the Patents Act 1990 for breaching the provisions relating to practice where people without the appropriate registration or qualification carry on business as patent attorneys.
Employees of a company who are not registered patent attorneys may act on behalf of their employers, or an employer related company in patent matters. This includes drafting and amending specifications. [Sub section 201(8) of the Patents Act 1990].
Companies are prohibited from carrying on business, practising, acting, describing or holding themselves out as patent attorneys or agents for obtaining patents. [Sub section 201(5) of the Patents Act 1990].
Offences - businesses, corporations, partnerships
Anyone carrying on a business, practising or acting as a patent attorney without being a registered patent attorney is liable for a penalty of $5400.
Members of partnerships carrying on business, practising or acting as patent attorneys are liable to a penalty of $5400 unless at least one of the members is a registered patent attorney or a legal practitioner who is eligible to practice under other provisions.
Companies carrying on business, practising, acting, describing themselves, or holding themselves out as patent attorneys or agents for obtaining patents will incur a penalty of $27 000.
Right to title
Only registered patent attorneys are permitted to describe themselves or hold themselves out as patent attorneys or agents for obtaining patents. [Sub section 201(3) of the Patents Act 1990].
Trade marks attorneys
Only registered trade marks attorneys are permitted to describe themselves or hold themselves out as trade marks attorneys. [Sub section 156(1) of the Trade Marks Act 1995].
You are not permitted to describe yourself as a trade marks agent unless you are a registered trade marks attorney, patent attorney, legal practitioner or someone with the right to practice as a trade marks agent under the Trade Marks Act 1955. [Sub section 156(2) of the Trade Marks Act 1995].
Practising as patent attorneys
Patent attorneys may practise in partnerships with other patent attorneys or other professionals if one of the partners is a registered patent attorney.
However, non-patent attorney members or employees of the partnership must not prepare specifications or documents to amend specifications unless they are working under the supervision of patent attorney partners or a court directs the amendments. [Sub section 201(4) and section 202A of the Patents Act 1990].
Describing a partnership as a patent attorney
Partnerships must not describe the partnership as a patent attorney or agent unless at least one member is a registered patent attorney (Sub section 205(4) of the Patents Act 1990).
Practising as trade marks attorneys
There is no restriction on partnerships for trade marks attorneys or trade marks agents other than restrictions imposed by other professions they might partner with, such as patent attorneys or lawyers.
Registered trade marks attorneys and registered patent attorneys can do everything set out in the relevant legislation (Trade Marks Act 1995 and Patents Act 1990).
However, unless they are also legal practitioners, they are not authorised to:
- prepare documents to be issued from or filed in courts
- transact legal business
- conduct legal proceedings
In intellectual property matters, communications between registered patent attorneys or trade marks attorneys and their clients are privileged to the same extent as communications between solicitors and their clients. This privilege also applies to any record or document made for the purposes of such communications.
For these purposes, intellectual property matters is defined as:
• matters relating to patents; or
• matters relating to trade marks; or
• matters relating to designs; or
• matters relating to plant breeder’s rights; or
• any related matters.
Registered patent attorneys and registered trade marks attorneys have the same right of lien over documents and property of clients as solicitors.