Registration process

To register as a trade marks or patent attorney you are required to file an application, meet certain legislative requirements and pay a fee. You can also register as an incorporated attorney. The following are guidelines to help you prepare your application.

How to register as a patent attorney

To register as a patent attorney, you must have all of the following parts approved.

When compiling your application, please set out the information in a clear and logical manner.

This should be done whether applying for each part of the registration separately or in one combined application.

The information provided should be directly relevant to your application and show sufficient depth of study with outcomes the same as, or similar to, those required.

If you need to provide detailed information on your academic qualification, or are seeking an exemption, then please indicate the specific topics in the courses completed which are relevant to your application.

You should also provide detailed course content information for those topics, including information in relation to the content and scope of the topic.

Compiling your application in this way will assist the smooth transition of your application to the Board, and assist it in considering your application.

Academic qualifications

Application for approval of academic qualifications for patent attorneys PDF in PDF format [765.24 KB]

To apply for approval of your academic qualification, you first need to have a suitable qualification in a field of science or technology that includes patentable subject matter. Under regulation 20.6 of the Patents Regulations 1991 (Cth), this qualification must be a Level 5 or higher qualification awarded under the Australian Qualifications Framework (AQF) or the New Zealand Qualifications Framework (NZQF).

This is the first, most fundamental step for anyone considering becoming a patent attorney.

The Board considers all qualification applications at Board meetings. Certified copies of the original need to be emailed through to mail.ttipab@ipaustralia.gov.au within the allocated timeframe.

Board meetings usually take place three times a year. Applications need to be submitted four weeks prior to the next Board meeting.

For more information, refer to academic qualification to be a patent attorney.

Exemptions from knowledge requirements

You can apply for an Exemption from the knowledge requirements if you believe you're eligible.

Exemptions can only be applied for on the basis of your courses of study, not experience.

Any granted exemption letter should then be submitted to the Board with an application for approval of knowledge requirements.

The Board considers most Exemption applications.

The Board will grant an exemption for professional conduct on the basis of you being admitted to practice in Australia within the last seven years.

The Secretary has a delegation from the Board to approve applications for legal process and professional conduct.

The Secretary can approve:

  • Legal process based on an Australian Law Degree, obtained within the previous seven years. In all other cases, the application will be forwarded to the Board.
  • Professional conduct based on a current practising certificate issued by the designated regulatory authority of an Australian jurisdiction. In all other cases, the Application will be forwarded to the Board.

Applications must be submitted at least six weeks before a Board meeting.

Approval of knowledge requirements

Apply for approval of your knowledge requirements.

This involves providing proof of completing accredited courses of the nine topic groups and/or evidence of being granted exemptions by the Board or the former Professional Standards Board for Patent and Trade Marks Attorneys (the PSB).

The Secretary has been delegated the power to approve knowledge requirement applications.

There is no deadline for knowledge requirement applications if all the required topic groups are covered by courses accredited by the PSB or the Board.

For more information, refer to our knowledge requirements.

Application for knowledge requirements for patent attorneys PDF in PDF format [617.31 KB]

Statements of skill

Gather statements of skill by a patent attorney who has been registered in Australia and/or New Zealand for at least five years prior to the start of your period of assessment.

The statements should be based on your employment record and duties over the previous two to five years. Your experience must include experience in preparing, filing and prosecuting patent applications in Australia and New Zealand, and other counties or jurisdictions specified in subregulation 20.10(1) of the Patents Regulations 1991 (Cth).

Statement of skill applications go to the Designated Manager (the Director General of IP Australia), along with the registration application form and other required material.

The statement of skill for patent attorneys provides some guidance on what is required in a statement of skill.

There is no deadline for applications that go to the Designated Manager.

If an applicant is unable to obtain a statement of skill from a registered patent attorney who has been registered for at least five years, the Board may, at the request of the applicant, prepare a statement of skill in relation to the applicant.

In this case, the statement will need to be submitted six weeks prior to a Board Meeting.

Application for registration

Apply to the Designated Manager for registration as a patent attorney.

Send your application to the Designated Manager (Director General of IP Australia). These can be submitted via the Secretary at any time to:

Mail.ttipab@ipaustralia.gov.au – preferred method. Remembering that academic awards and transcripts need to be certified and then emailed to us.

Checklist

When you apply for registration, make sure the information in your application is relevant and clearly set out.

The following should be included:

  • the registration application form, Application for registration as a patent attorney PDF in PDF format [625.81 KB]
  • a letter from the PSB or Board re academic qualification approval
  • a letter from the PSB or Board re knowledge requirements
  • a statement of skill as to pre-registration employment and duties
  • a declaration by yourself regarding offences under subregulation 20.12(1) of the Patents Regulations 1991 (Cth)
  • a declaration by another party regarding your good fame, integrity and character. (Please note: the person who is giving the Declaration must include how long they have known the applicant and what their relationship is, e.g., colleague, supervisor. You cannot use a family member for this declaration).
  • The prescribed fee of $300 payable via the eServices portal.

Please ensure you keep a copy of your application and all supporting documents; applicants frequently find that they need these documents later for purposes unrelated to their application, and the PSB Secretariat may not be able to immediately locate them for you.   

Information about documents

  • All documents, certificates, academic transcripts or awards must be certified copies.
  • Please use the Declaration form, Declaration form PDF in PDF format [685.78 KB].
  • Certification of copies of documents should be done by those who are qualified to witness a declaration. See page 2 of the declaration form for a list of those qualified.
  • Certification of copies of documents should be done on the actual copy, not on a separate page.
  • Certification is simply done by writing on the copy that "I have sighted the original document and this is a true and correct copy of the original document". Sign and date the copy, then print or stamp the name and the qualifications of the certifier.
  • Multi-page documents should be certified on each page. Alternatively, multi-page documents can be certified on the first page and initialed by the certifier on each subsequent page. In this latter case, the certifier should also indicate on the first page the total number of pages they have certified.

Patent attorney fees

The application fee for a new registration as a patent attorney is $300.

The application fee for a new registration as a patent attorney and trade marks attorney is $500.

An annual renewal fee of $350 is payable on 1 July each year. A renewal notice is sent to all registered attorneys by no later than 1 June each year.

If renewal hasn't been received by 31 July, you may be removed from the register for non-payment.

The restoration fee following a voluntary removal or being removed for non-payment is $250.

The annual fee for dual-registration as a patent attorney and trade marks attorney is $550.

Sign into eServices

Make a Payment (Paying Attorney fees) PDF in PDF format [186.01 KB]

Guidelines on knowledge requirements for patent attorneys

Purpose of these guidelines

These guidelines have been written by the Board to provide guidance to an applicant seeking registration as a patent attorney.

An applicant cannot be registered as a patent attorney unless the Board is satisfied that an applicant has the ‘knowledge of intellectual property (IP) law and practice that is required for a person to practise as a patent attorney’.

These guidelines set out:

  • knowledge requirements: schedule 5 of the Patents Regulations 1991 is the legislative basis for the guidelines
  • areas of study: completion of these provides what the Board considers an appropriate level of knowledge requirements to practise as a patent attorney
  • satisfying the knowledge requirements by:
    • completing an accredited course for these purposes; or
    • gaining an exemption from having to satisfy the requirements
    • applying for approval of knowledge requirements

Knowledge requirements

The knowledge requirements as set out in schedule 5 are:

Part 1: Overall requirement

A course of study must provide for a student to have an appropriate level of:

  • knowledge and practical application so the student can give advice about applicable categories of protection for particular activities
  • appreciation of the advantages of each form of protection for a client
  • understanding of how to get and maintain appropriate protection for a client
  • understanding of the required standard of professional conduct

Part 2: Legal process and overview of intellectual property

A course of study must provide for a student to have an appropriate level of understanding of the Australian or New Zealand legal systems and how intellectual property rights may be protected.

Part 3: Professional conduct

A course of study must provide for a student to have an appropriate level of understanding of the rights, privileges and responsibilities of a patent attorney.

Part 4: Intellectual property law

A course of study must provide for a student to have an appropriate level of understanding of the principles of trade marks, patents, designs and copyright.

Part 5: Intellectual property systems

A course of study must provide for a student to have an appropriate level of understanding of the system of protecting and exploiting trade marks, patents and designs, both in Australia and New Zealand, and in other countries. This includes:

  • the ability to draft patent specifications
  • an understanding of patent specifications
  • the ability to advise on the interpretation, validity and infringement of patent specifications

Areas of study

The regulations allow the Board to publish guidelines setting out the criteria for deciding whether or not areas of study meet the knowledge requirements.

The Board has established a curriculum of studies that will satisfy the minimum Knowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdf PDF in PDF format [118.49 KB]Knowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirement Guidelines for Trans-Tasman Patent Attorneys.pdfKnowledge Requirements of schedule 5.

The curriculum consists of nine topic groups that form the basis for approval of programs of study offered by accredited educational institutions.

The present curriculum will also satisfy the knowledge requirements for registration as a trade marks attorney.

Provided all requirements are satisfied, it is possible to obtain dual registration as a patent attorney and a trade marks attorney.

Each topic group is equivalent in workload to a normal unit of study in a semester at a higher education institution (approximately 25% of a full-time study load).

It is recognised that some courses may have no formal contact hours, such as in distance or on-line education, or may be taught in intensive mode. In those instances, the total time requirement may be a more reliable guide to the workload of the course than the formal contact hours.

The nine topic groups

The Board curriculum addresses the knowledge requirements in Schedule 5 as follows:

Part 1: Overall requirements

These requirements will be met by satisfying all of the knowledge requirements in Parts 2-5.

Part 2: Legal process and overview of intellectual property

  • Group A1 - Legal Process
  • Group A2 - Overview of Intellectual Property
  • Part 3: Professional Conduct

  • Group B - Professional Conduct
  • Part 4: Intellectual Property Law

  • Group C - Trade Marks Law
  • Group E - Patent Law
  • Group I - Designs Law
  • Part 5: Intellectual Property Systems

  • Group D - Trade Marks Practice
  • Group F - Patent System
  • Group G - Drafting Patent Specifications
  • Group H - Interpretation and Validity of Patent Specifications

The overall objective is for an applicant to have an appropriate level of:

  • knowledge and practical application so that the applicant can give advice about applicable categories of protection for particular activities
  • appreciation of the advantages of each form of protection for a client
  • understanding of how to get and maintain appropriate protection for a client
  • understanding of the required standard of professional conduct

Satisfying the knowledge requirements

The knowledge requirements may be satisfied by:

  • satisfactorily completing a PSB or Board accredited course of study; or
  • gaining an exemption in relation to one or more courses of study (topic groups).

Further information about each of these ways of satisfying the knowledge requirements is set out below.

Accredited courses of study

A topic group may be passed by successfully completing a course of study offered by a university or any other institution accredited by the PSB or the Board in relation to that topic group.

Accredited studies remain valid for 10 years after completion.

Exemptions for non-accredited courses of study

The Board may exempt an applicant from having to satisfy all or some of the requirements of a topic group as outlined in Annexure A on the basis of previous studies in a non-accredited course (including a course previously or subsequently accredited, but that was not accredited for the particular year in which the applicant completed it).

Before granting an exemption, the Board must be satisfied that the applicant has passed the course of study at a satisfactory level and that the course has outcomes that are the ’same as, or similar to, those of an accredited course for the knowledge requirement for which the exemption is sought’.

Relevant studies completed within seven years prior to application will normally be eligible for an exemption. Older qualifications will be considered on a case-by-case basis.

In considering whether a course completed over seven years ago remains current, the Board takes care to ensure that the studies are relevant to current practice.

For example, the Board may decline to grant an exemption where the law has changed significantly, rendering the prior studies inappropriate or obsolete. This situation is less likely to arise in areas dealing with concepts of enduring relevance, such as knowledge of legal processes.

Once an exemption has been given, it remains valid for five years, or such longer period as the Board may stipulate in writing. After that date, if the applicant has not been registered as a patent attorney, the Board may decide that the course is outdated and must be repeated.

Information for granting an exemption from a topic group

Exemptions may be sought from any of the nine topic groups approved by the Board.

In assessing an exemption application, the Board seeks extensive information about the course. This normally includes:

  • evidence that the applicant has successfully completed the subject. This is normally the academic transcript (the original or a certified copy)
  • a mapping of the topic requirements (see Annex B) against the course undertaken, together with evidence of the inclusion of the particular component
  • the approved forms have been designed to assist applicants in supplying the required details whether the course is based on a law that is the same or similar to the Australian law applying to the topic group
  • duration and workload
  • methods of assessment (in looking at the methods of assessment the Board needs to be satisfied that the applicant has been assessed on a Board selection of the course)

Applicants often fail to provide sufficient evidence to satisfy the Board that a particular course has met the requirements. The inclusion of a relevant item in a course outline will not suffice.

The PSB needs to be assured that the time allocations permit the subject matter to be studied in sufficient depth. For this reason, applicants are urged wherever possible to provide detailed course outlines for the year in which the course was taken by the applicant.

Where such outlines are unavailable, applicants may need to obtain a letter or statement from someone involved in teaching the course that can provide the necessary information.

Minor shortcomings within topic groups

The regulations permit the Board to declare that an applicant has the required knowledge to practice as a patent attorney even though they have not met all of the knowledge requirements of Schedule 5.7.

This concession will apply to small gaps in the record of study, such as the omission of a minor aspect of a particular topic group. It will not apply where there are significant gaps or where an entire topic group has not been studied formally.

Overseas qualifications

International qualifications may be submitted to gain exemptions.

However, the Board does not grant exemptions purely on the basis that a qualification from another jurisdiction has satisfied the requirements of that jurisdiction. It generally requires that the law should be similar to that in Australia and/or that the legal institutions and their workings are similar.

Some topic groups, such as patent law or trade marks law, require Australian and New Zealand content.

Other topic groups such as drafting patent specifications are not so jurisdictionally distinct and the Board may look more favourably on practical subjects for exemption.

Generally speaking, exemptions are granted on a case-by-case basis with the crucial issue being that of content.

Status of exemptions granted by universities

Universities and other accredited providers customarily grant exemptions or waivers of prerequisites for subjects in their academic programs so as to enable students to progress to advanced studies or to satisfy requirements for their degrees or diplomas.

The Board recognises the right of a university to grant exemptions for its own academic purposes. However, the Board does not recognise these exemptions.

The Board has a statutory responsibility to make its own assessment of the relevance and adequacy of the prior studies on which an exemption is sought. As such, an application for exemption will still have to be made to the Board for assessment.

Thus, for example, an institution may grant an exemption from patent law on the basis that the applicant has previously studied that area overseas, or as part of a general course on intellectual property. However, an application would still have to be made to the Board for an exemption, and it would be unlikely that the Board would be satisfied that those prior studies would justify an exemption for Patent Law - Topic Group E as it may not cover Australian and New Zealand patent law or be studied to a sufficient depth.

Knowledge acquired through experience

The regulations stipulate that the requisite knowledge must be gained through formal study at a university or other approved institution.

Knowledge gained by experience may not be taken into account when deciding whether an exemption from a study requirement may be granted.

In relation to knowledge requirements, the regulations envisage a course of study. This is a theme throughout the regulations and knowledge gained through experience is not contemplated.

Summary of satisfying the knowledge requirements

In summary, the knowledge requirements may be satisfied by:

  • Completing an accredited course or courses of study to satisfy some or all the requirements of Schedule 5 (the nine topic groups). Passes in accredited courses remain valid for 10 years.
  • Obtaining an exemption for some or all of the requirements of Schedule 5 on the basis of completion of a course of study within the previous seven year period or longer as allowed by the PSB or the Board.
  • Some combination of 1 or 2.
  • Passing the Board examinations in relation to any of the nine topic groups if available. Whilst the Regulations provide for Board examinations, the Board does not currently provide examinations and it is unlikely to do so.

The following table summarises the period of validity in each case:

Skill

Term

Basis for satisfaction of knowledge requirements

Maximum validity

Accredited courses of study

10 years

Exemptions for non-accredited courses of study

Normally a maximum of seven years before exemption granted, plus five years following exemption. The Board may extend either period in individual cases.

How to apply for an exemption

The following information is relevant for applicants who choose to seek exemptions by addressing the topic groups in the curriculum approved by the Board.

Applications for exemption should be made on the approved form. The form comes in two parts

Part 1 is the cover form. Part 2 relates to the particular topic group in which the exemption is sought.

Examples of the completed forms are here:

Sample application for exemption from a topic group part 1 PDF in PDF format [21.62 KB]

Sample application for exemption from a topic group part 2 PDF in PDF format [13.09 KB]

Applicants making applications are required to complete both parts of the application and also provide:

  • a certified copy of the academic record or similar record indicating successful completion of the course(s) of study on which the application for exemption is based
  • syllabus details showing detailed information of the course(s) from handbook subject descriptions or course outlines
  • information on the assessment regime for each course and evidence that the assessment covered relevant topic areas.

How to apply for approval of knowledge requirements

Before an applicant can be registered as a patent attorney, the Board must be satisfied that the applicant has the 'knowledge of intellectual property law and practice required to practice as a patent attorney'.

Once an applicant has satisfied the relevant requirements, either through passing an accredited course or gaining an exemption from the Board for each topic group, the applicant must apply to the Board for their approval.

As Board meetings are usually only held three times a year, the Board has enabled the Board Secretary to approve knowledge requirements in most cases.

Applicants should check with the Board Secretariat.

An application must be on the application form: Application for knowledge requirements for patent attorneys PDF in PDF format [617.31 KB].

It must be accompanied by:

  • evidence that you have the relevant knowledge
  • a certified copy of any academic record that shows the study that contributes to the knowledge.

The Board will notify you within 42 days of its decision of whether or not it is satisfied that you have met the requirements.

Make a payment (paying attorney fees) PDF in PDF format [186.01 KB]

Do not certify your own documents or write a statutory declaration certifying your own documents.

How to register as a trade mark attorney

To register as a trade marks attorney, you must have all of the following parts approved.

When compiling your application, please set out the information in a clear and logical manner. This should be done whether applying for each part of the registration separately or in one combined application.

The information provided should be directly relevant to your application and show sufficient depth of study with outcomes the same as, or similar to, those required.

If you need to provide detailed information on your academic qualification or are seeking an exemption, then please indicate the specific topics in the courses completed which are relevant to your application. You should also provide detailed course content information for those topics, including information in relation to the content and scope of the topic.

Compiling your application in this way will assist the smooth transition of your application to the Board and assist the Board when considering your application.

Academic qualifications

Application for approval of academic qualifications - trade marks.pdf PDF in PDF format [609.27 KB]

The Board may approve a Level 5 or higher Australian Qualifications Framework (AQF) qualification, or equivalent.

The Secretary has been delegated power to approve Qualification Applications where the application relates to a qualification provided by regulation 20.6(a) of the Trade Marks Regulations 1995 (Cth), or where the Board has already approved the qualification under regulation 20.6(1)(b) of the Patents Regulations 1991 (Cth).

There is no deadline for Australian Qualification Applications for Trade Marks.

All overseas qualifications will be considered by the Board. In this instance, the application will need to be submitted four weeks before the next Board meeting.

For more information refer to Academic qualifications.

Exemptions from knowledge requirements

Apply for exemptions from the knowledge requirements that you believe you may be eligible for.

Exemptions can only be applied for on the basis of your courses of study, not experience. The granted exemption letter should then be submitted to the PSB with an application for approval of Knowledge Requirements.

The PSB considers most exemption applications. The PSB will grant an exemption for Professional Conduct on the basis of you being admitted to practice in Australia within the last 7 years.

The Secretary has delegation from the PSB to approve applications for Legal Process and Professional Conduct. The Secretary can approve:

  • Legal Process on the basis of an Australian Bachelor of Laws Degree, obtained within the previous 7 years. In all other cases, the application will be forwarded to the PSB.
  • Professional Conduct on the basis of a current Australian Legal Practicing Certificate. In all other cases, the application will be forwarded to the PSB.

Applications must be submitted at least 6 weeks before a PSB meeting.

Approval of knowledge requirements

PDF iconApplication for trade marks knowledge requirements

This involves providing proof of completing accredited courses of the four topic groups and/or evidence of being granted exemptions by the PSB and/or the Board.

The Secretary has been delegated the power to approve Knowledge Requirement applications from candidates who have passed Board-accredited courses or who have exemptions granted by the PSB or the Board within the time limits provided in the relevant regulations.

There is no deadline for Knowledge Requirement applications if all the required topic groups were PSB or Board-accredited courses.

For more information, refer to the Knowledge requirements.

Application for registration

Apply to the Designated Manager for Registration as a Trade marks Attorney.

PDF iconApplication for registration as a trade marks attorney

Send your application to the Designated Manager (Director General of IP Australia). These can be submitted via the Secretary at any time:

Mail.ttipab@ipaustralia.gov.au – preferred method. Remembering that academic awards and transcripts need to be certified and then emailed to us.

Checklist

When you apply for registration, make sure the information in your application is relevant and clearly set out.

The following should be included:

  • the Registration Application Form, PDF iconApplication for registration as a trade marks attorney
  • a letter from the PSB or Board re academic qualification approval
  • a letter from the PSB or Board re knowledge requirements
  • a declaration by yourself regarding Offences under subregulation 20.10(1) of the Trade Marks Regulations 1995 (Cth)
  • a declaration by another party regarding your good fame, integrity and character. Please note that the person who is giving the declaration must include how long they have known the applicant and what their relationship is, e.g., colleague, supervisor. You cannot use a family member for this declaration.
  • The prescribed fee of $200.00, payable via the eServices portal.

Please ensure you keep a copy of your application and all supporting documents; applicants frequently find that they need these documents later for purposes unrelated to their application, and the Board Secretariat may not be able to immediately locate them for you.   

Information about Documents

  • All documents, certificates, academic transcripts or awards must be certified copies.
  • Please use the Declaration Form, PDF iconDeclaration form.
  • Certification of copies of documents should be done by those who are qualified to witness a declaration. See page 2 of the declaration form for a list of those qualified.
  • Certification of copies of documents should be done on the actual copy, not on a separate page.
  • Certification is simply done by writing on the copy that "I have sighted the original document and this is a true and correct copy of the original document. Sign and date the copy, print or stamp the name and the qualifications of the certifier.
  • Multi-page documents should be certified on each page. Alternatively, multi-page documents can be certified on the first page and initialed by the certifier on each subsequent page. In this latter case, the certifier should also indicate on the first page the total number of pages they have certified.
  • Guidelines on knowledge requirements for trade marks attorneys
  • Fees

Trade marks attorney fees

Application fee for new registration as a trade marks attorney - $200.

Annual renewal fee - $350 is payable on 1 July each year. A renewal notice is sent to all registered attorneys no later than 1 June each year. If renewal hasn't been received by 31 July, you may be removed from the register for non-payment.

Restoration fee following Voluntary Removal or removed for non-payment - $250.

For information on what happens if you don’t pay the renewal fee, refer to the Renewals page.

Sign in to online services (eServices)

Make a payment (a guide for how to pay attorney fees using online services) PDF in PDF format [186.01 KB]

Guidelines on knowledge requirements for trade marks attorneys

  • These guidelines have been written by the Trans-Tasman IP Attorneys Board (the Board) to provide guidance to applicants seeking registration as a trade marks attorney.

    An applicant cannot be registered as a trade marks attorney unless the Board is satisfied that an applicant has the ‘knowledge of intellectual property law and practice that is required for a person to practise as a trade marks attorney’.

    Knowledge requirements

    The knowledge requirements as set out in the Trade Marks Regulations 1995 (Cth) (the Regulations) are:

    Part 1: Overall requirement

    A course of study must provide for a student to have an appropriate level of:

  • knowledge and practical application so that the student can give advice about applicable categories of protection for particular activities
  • appreciation of the advantages of each form of protection for a client
  • understanding of how to get and maintain appropriate protection for a client
  • understanding of the required standard of professional conduct.
  • Part 2: Legal process and overview of intellectual property

    A course of study must provide for a student to have an appropriate level of understanding of the Australian legal system and how intellectual property rights may be protected, including by reference to:

  • the Australian legal system
  • intellectual property rights.
  • Part 3: Professional conduct

    A course of study must provide for a student to have an appropriate level of understanding of the rights, privileges and responsibilities of a patent attorney or trade marks attorney.

    Part 4: Intellectual property law

    A course of study must provide for a student to have an appropriate level of understanding of the principles of trade marks, patents, designs and copyright.

    Part 5: Intellectual property systems

    A course of study must provide for a student to have an appropriate level of understanding of the system of protecting and exploiting trade marks, both in Australia and other countries.

    Areas of study

    The regulations allow the Board to publish guidelines setting out the criteria for deciding whether or not areas of study meet the knowledge requirements.

    The Board has established a curriculum of studies that will satisfy the minimum knowledge requirements of Schedule 5 of the Patents Regulations 1991 (as amended for trade marks attorneys).

    The curriculum consists of four topic groups that form the basis for approval of programs of study offered by accredited educational institutions. It is intended that the curriculum will be dynamic and flexible. However, any changes to this curriculum will be made well in advance of implementation and steps will be taken to ensure that applicants currently enrolled will not be disadvantaged.

    The present curriculum is identical to the first four topic groups that will satisfy the knowledge requirements for registration as a patent attorney (topic groups A - D).

    Each topic group is equivalent in workload to a normal unit of study in a semester at a higher education institution (approximately 25 per cent of a full-time study load).

    It is recognised that some courses may have no formal contact hours, such as in distance or on-line education, or may be taught in intensive mode. In those instances, the total time requirement may be a more reliable guide to the workload of the course rather than the formal contact hours.

    The four topic groups

    The PSB curriculum consists of four topic groups. It addresses the knowledge requirements in Schedule 5, as amended for registration as a trade marks attorney, as follows:

    Part 1: Overall requirements

  • These requirements will be met by satisfying all of the knowledge requirements in Parts 2-5.
  • Part 2: Legal process and overview of intellectual property

  • Group A1 - Legal Process
  • Group A2 - Overview of Intellectual Property
  • Part 3: Professional conduct

  • Group B - Professional Conduct
  • Part 4: Intellectual property law

  • Group A2 - Overview of Intellectual Property
  • Group C - Trade Mark Law
  • Part 5: Intellectual property systems

  • Group D - Trade Mark Practice

The overall objective is for a candidate to have an appropriate level of:

  • knowledge and practical application so the candidate can give advice about applicable categories of protection for particular activities, and an appreciation of the advantages of each form of protection for a client
  • understanding of how to get and maintain appropriate protection for a client
  • understanding of the required standard of professional conduct.

Satisfying the knowledge requirements

The knowledge requirements may be satisfied by:

  • satisfactorily completing a PSB or Board accredited course of study
  • gaining an exemption in relation to one or more courses of study (topic groups)
  • satisfying the Board that the applicant has the required knowledge by a means other than completing a course of study. The Board will consider this criterion on a case by case basis following receipt of a request made under regulation 20.8(4) of the Trade Marks Regulations 1995.

Further information about the first two of these ways of satisfying the knowledge requirements is set out below.

Accredited courses of study

A topic group may be passed by successfully completing a course of study offered by a university or any other institution accredited by the PSB or the Board in relation to that topic group.

Accredited studies remain valid for 10 years after completion.

Exemptions for on-accredited courses of study

The Board may exempt an applicant from having to satisfy some or all of the requirements of a topic group on the basis of previous studies in a non-accredited course (including a course previously or subsequently accredited, but that was not accredited for the particular year in which the candidate completed it). Practical experience alone is not sufficient for an exemption to be granted.

Before granting an exemption, the Board must be satisfied that the candidate has passed the course of study at a satisfactory level and that the course has outcomes that are the ‘same as, or similar to, those of an accredited course for the knowledge requirement for which the exemption is sought’.

Relevant studies completed within seven years prior to application will normally be eligible for an exemption. Older qualifications will be considered on a case by case basis.

In considering whether a course completed over seven years ago remains current, the Board takes care to ensure that the studies are relevant to current practice. For example, the Board may decline to grant an exemption where the law has changed significantly, rendering the prior studies inappropriate or obsolete. This situation is less likely to arise in areas dealing with concepts of enduring relevance, such as knowledge of legal processes.

Once an exemption has been given, it remains valid for five years, or such longer period as the Board may stipulate in writing. After that date, if the candidate has not been registered as a trade marks attorney, the Board may decide that the course is outdated and must be repeated.

Information required by the Board for the granting of an exemption from a topic group

Exemptions may be sought from any of the four topic groups approved by the PSB.

In assessing an exemption application, the Board seeks extensive information about the course. This normally includes:

  • evidence that the applicant has successfully completed the subject. This is normally the academic transcript (the original or a certified copy)
  • a mapping of the topic requirements against the course undertaken, together with evidence of the inclusion of the particular component. The approved forms have been designed to assist applicants in supplying required details
  • whether the course is based on law that is the same or similar to the Australian law applying to the topic group
  • duration and workload

Methods of assessment

In looking at the methods of assessment, the Board needs to be satisfied that the applicant has been assessed on a Board selection of the course.

Applicants often fail to provide sufficient evidence to satisfy the Board that a particular course has met the requirements. The inclusion of a relevant item in a course outline will not suffice.

The Board needs to be assured that the time allocations permit the subject matter to be studied in sufficient depth. For this reason, candidates are urged wherever possible to provide detailed course outlines for the year in which the course was taken by the candidate.

Where such outlines are unavailable, candidates may need to obtain a letter or statement from someone involved in teaching the course that can provide the necessary information.

Overseas qualifications

International qualifications may be submitted to gain exemptions. However, the Board does not grant exemptions purely on the basis that a qualification from another jurisdiction has satisfied the requirements of that jurisdiction.

It generally requires that the law should be similar to that in Australia and/or that the legal institutions and their workings are similar.

Some topic groups, such as Trade Marks Law, require Australian content. Generally speaking exemptions are granted on a case by case basis with the crucial issue being that of content.

Status of exemptions granted by universities

Universities and other accredited providers customarily grant exemptions or waivers of prerequisites for subjects in their academic programs so as to enable students to progress to advanced studies or to satisfy requirements for their degrees or diplomas.

The Board recognises the right of a university to grant exemptions for its own academic purposes, however the Board does not recognise these exemptions.

The Board has a statutory responsibility to make its own assessment of the relevance and adequacy of the prior studies on which an exemption is sought. As such, an application for exemption will still have to be made to the Board for assessment.

Thus, for example, an institution may grant an exemption from Trade Mark Law on the basis that the candidate has previously studied that area overseas, or as part of a general course on intellectual property.

However, an application would still have to be made to the Board for an exemption, and it would be unlikely the Board would be satisfied that those prior studies would justify an exemption for Trade Mark Law - Topic Group C. - as it may not cover Australian trade mark law or be studied to a sufficient depth.

Knowledge acquired through experience

The Regulations exclude knowledge gained by experience from being taken into account when deciding whether an exemption from a study requirement may be granted.

However, in order to become a registered trade marks attorney, the Regulations specify that the Board needs to be satisfied that the applicant has the knowledge of intellectual property law and practice that is required for a person to practise as a trade marks attorney. The Board will determine how it is satisfied for this requirement based on the particular evidence presented to it by the applicant.

Summary of satisfying the knowledge requirements

In summary, the knowledge requirements may be satisfied by:

  • Completing an accredited course or courses of study to satisfy some or all of the four topic groups. Passes in accredited courses remain valid for 10 years.
  • Obtaining an exemption for some or all of the requirements of Schedule 5 on the basis of completion of a course of study within a previous seven year period or such longer period as allowed by Board.
  • Some combination of 1 or 2.
  • Passing the Board examinations in relation to any of the four topic groups if available. Whilst the Regulations provide for Board examinations, the Board does not currently provide examinations and it is unlikely to do so.

Satisfying the Board by a means other than 1, 2, 3, or 4.

The following table summarises the period of validity in each case:

Skill

Term

Basis for satisfaction of Knowledge Requirements

Maximum validity

Accredited courses of study

10 years

Exemptions for non-accredited courses of study

Normally a maximum of seven years before exemption granted, plus five years following exemption. PSB may extend either period in individual cases.

How to apply for an exemption

The following information is relevant for applicants who choose to seek exemptions by addressing the topic groups in the curriculum approved by the Board.

Applications for exemption should be made on the approved form. The form comes in two parts.

Part one is the cover form. Part two relates to the particular topic group in which the exemption is sought.

Examples of the completed forms are here:

Sample application for exemption from a topic group part 1 PDF in PDF format [21.62 KB]

Sample application for exemption from a topic group part 2 PDF in PDF format [13.09 KB]

Applicants making applications are required to complete both parts of the application and also provide:

  • a certified copy of the academic record or similar record indicating successful completion of the course(s) of study on which the application for exemption is based
  • syllabus details showing detailed information of the course(s) from handbook subject descriptions or course outlines
  • information on the assessment regime for each course and evidence that the assessment covered relevant topic areas.

How to apply for approval of knowledge requirements

Before an applicant can be registered as a trade marks attorney, the Board must be satisfied that the applicant has the knowledge of intellectual property law and practice required to practice as a trade marks attorney.

Once an applicant has satisfied the relevant requirements, either through passing an accredited course or gaining an exemption from the Board for each topic group, the applicant must apply to the Board for their approval.

As Board meetings are usually held three times a year, the Board has enabled the Secretary to approve knowledge requirements in cases where applicants have passed accredited courses or gained Board exemptions.

An application must be on the application form Reg 20.7 application for trade marks knowledge requirements PDF in PDF format [615.53 KB] 

It must be accompanied by:

  • evidence that you have the relevant knowledge
  • a certified copy of any academic record that shows the study that contributes to the knowledge.
  • The Board will notify you within 42 days of its decision of whether or not it is satisfied that you have met the requirements.

Do not certify your own documents or write a statutory declaration certifying your own documents.

How to register as an incorporated attorney

Incorporation registration

Companies wishing to register as incorporated patent or trade marks attorneys can apply for registration by submitting the appropriate form and paying an application fee of $300 (payable at the time the registration form is submitted).

An annual fee of $350 is required thereafter to maintain the registration.

To be suitable to register as an incorporated attorney, a company must meet all of the following criteria:

  • be a company registered under the Corporations Act 2001 (Cth), or the Companies ACT 1993 of New Zealand (for incorporated patent attorneys only)

  • be able to provide evidence of company incorporation

  • have at least one patent or trade marks attorney as a director of the company

  • possess professional indemnity insurance

To register as an incorporated patent or trade marks attorney follow the below steps:

1. Download the appropriate form:
Application for registration as an incorporated patent attorney.pdf PDF in PDF format [761.38 KB]

Application for registration as an incorporated trade marks attorney.pdf PDF in PDF format [761.97 KB]

2. Complete the form and collate the relevant supporting documentation.

  • Provide proof of adequate and appropriate professional indemnity insurance (such as a Certificate of Currency).

  • Provide evidence of prior incorporation of the company (such as an Australian Securities Investments Commission Certificate of Registration).

  • Provide the name(s) of the patent or trade marks attorney who is director of the company.

  • Email completed forms and evidence to the Board via: mail.ttipab@ipaustralia.gov.au

The Board secretariat will process the request for registration.

The Designated Manager will then register the incorporated patent and/or trade marks attorney.

A Certificate of Registration will then be issued to the incorporated patent or trade marks attorney if the registration is accepted.

Serious offence notifications

As provided in Regulation 20.28A of the Patents Regulations 1991 a registered patent attorney must notify the Designated Manager regarding serious offences within 14 days of being charged with a serious offence.

Regulation 20.14A of the Trade Marks Regulations 1995 has the same requirements for a registered trade marks attorney.

A serious offence is defined in the regulations as an offence that:

involves obtaining property or a financial advantage by deception or fraudulent conduct; and 

is either:

  • an indictable offence against a law of the Commonwealth, a state or a territory (whether or not the offence may be dealt with summarily) or 

  • an offence against a law of a foreign country that would be an indictable offence against a law of the Commonwealth, a state or a territory if committed in Australia (whether or not the offence could be dealt with summarily if committed in Australia).

If the registered attorney fails to notify the Designated Manager of being charged with a serious offence and does not have a reasonable excuse for failing to comply, the failure to comply constitutes unsatisfactory professional conduct on behalf of the attorney.

To notify the Designated Manager of a serious offence the following procedure will be followed when an attorney is charged with a serious offence:

  • The charged attorney, within 14 days of being charged with a serious offence, writes to the Designated Manager (there is no form to fill in) to report the charge.

This can be done by emailing the notification to: mail.ttipab@ipaustralia.gov.au

The Designated Manager will review the case and will either inform of the result:

  • by written notice to the attorney, suspend the attorney's registration from the date of when the notice is given to the attorney, or

  • by written notice to the attorney advise that the registration will not be suspended

If a suspended attorney intends to contest the Designated Manager's ruling then the attorney has 28 days after the date of the notice, to show why the suspension should be lifted.

The Designated Manager can end the suspension in certain circumstances, for example, if the charge relating to the serious offence is not legally pursued in court.

Guidelines for Board investigations into incorporated attorneys

These guidelines set out the procedures that the Trans-Tasman IP Attorneys Board (the Board) will follow in relation to investigating an incorporated patent attorney or an incorporated trade marks attorney (incorporated attorney) and deciding whether or not to apply to the Trans Tasman IP Attorneys Disciplinary Tribunal (the Tribunal) for cancellation or suspension of the incorporated attorney's registration.

The Board has also issued guidelines on the discipline procedures relevant to an individual registered attorney.

Overview

The legislative basis of the Board's role in disciplinary proceedings against an incorporated patent attorney is regulation 20A.10 of the Patents Regulations 1991 (the Regulations).

The legislative basis of the Board's role in disciplinary proceedings against an incorporated trade marks attorney is regulation 20A.10 of the Trade Marks Regulations 1995 which are generally similar to the provisions provided by the Patents Regulations.

The focus of the Board's disciplinary procedures in relation to an incorporated attorney is to decide whether or not to apply to the Tribunal for cancellation or suspension of an incorporated attorney's registration.  

The Board is not empowered to order or provide restitution to clients of incorporated attorneys. Informants seeking restitution for such matters as overcharging or failure to perform services, compensation for damage or for loss of profits, or the return of documents, need to pursue such restitution or compensation in other forums. It should be noted, however, that neither the Board nor the Secretary to the Board is able to provide legal advice.

Basis for a cancellation or suspension application

The Board may apply to the tribunal to cancel or suspend an incorporated attorney's registration if:

  • an attorney who is, or was, an employee or officer of the incorporated attorney is found guilty of professional misconduct; and
  • the professional misconduct occurred when the attorney was an employee or officer of the incorporated attorney; and
  • the Tribunal has cancelled or suspended the attorney's registration

The regulations define professional misconduct as: 

  • unsatisfactory professional conduct that involves a substantial or consistent failure to reach reasonable standards of competence and diligence; or 
  • any other conduct, whether occurring in connection with practice as an attorney or otherwise, that shows that the attorney is not of good fame, integrity and character; or 
  • any contravention of a law that is declared by the regulations to be professional misconduct 

In deciding whether to apply to the  Tribunal, the Board may consider:

  • the professional misconduct engaged in by the attorney
  • the behaviour of the incorporated attorney's officers and employees
  • whether the officers and employees of the incorporated attorney complied with the Code of Conduct; and
  • any other information provided by the incorporated attorney in relation to the professional misconduct of the attorney

Requiring information from the attorney 

The Board may request an incorporated attorney to provide information to the PSB in relation to the professional misconduct.

Commencing a cancellation or suspension application

Once the Board determines that it will commence a cancellation or suspension application in relation to an incorporated attorney, the Board must formulate reasons why it considers the incorporated attorney's registration should be cancelled or suspended. 

An application for cancellation or suspension of an incorporated attorney's registration (application) must be made in writing to the Tribunal and must set out the reasons for the application.

A copy of the application must be given to the incorporated attorney by the Board as soon as practicable after the application is made to the Tribunal.

Accredited courses

The University of Melbourne; Monash University; the University of Technology, Sydney (UTS); Victoria University of Wellington; and the Queensland University of Technology (QUT) deliver courses that are accredited by the Professional Standards Board for Patent and Trade Marks Attorneys (PSB) or the Trans-Tasman IP Attorneys Board (the Board). However, not all of these tertiary institutions offer courses for every topic group required for registration as a patent attorney or a trade marks attorney.

Accredited courses at UTS are now conducted online.

Some tertiary institutions provide distance delivery of courses as intensive learning or by the more traditional distance learning in some subjects. You will need to talk to the tertiary institutions about their individual courses and requirements.

You should contact your chosen accredited institution early to enrol in appropriate courses through the institution's normal enrolment process.

The PSB stopped conducting its own examinations in 2004.

Accredited courses

Trans-Tasman Patent Attorneys

The Trans-Tasman IP Attorneys Board (TTIPAB) has accredited the following courses:

Victoria University of Wellington

TTIPAB Topic Group(s)

Current accredited courses

A2: Overview of IP

New Zealand and Australian Intellectual Property Law [LAWS551]

C: Trade Marks Law

E: Patent Law

Trade Mark Law and Unfair Competition [LAWS536]

Patent Law [LAWS537]

 

The Professional Standards Board for Patent and Trade Marks Attorneys (PSB) has previously accredited the following courses:

Please note these courses are not approved to satisfy the requirements for registration as a patent attorney under the trans-Tasman patent attorney regime, but they do satisfy the requirements for registration as a trade marks attorney. Transitional provisions have been provided under the legislation establishing the trans-Tasman regime to allow the Board to be satisfied that a person has the requisite knowledge to become a patent attorney.

Australian Patent Attorney and Trade Marks Attorney Regimes

University of Melbourne

PSB topic group(s)

Current accredited courses

Previous accredited courses

A1: Legal Process

and

A2: Overview of IP

Australian Legal Process and Legal Institutions or Fundamentals of the Common Law [LAWS70217] or Fundamentals of the Common Law – Int [LAWS70217]

Overview of Intellectual Property

 

B: Professional Conduct

Trade Marks Practice (LAWS90035)

Advanced Workshop in Professional Conduct for Trade Marks and Patents Attorneys] and Trade Marks Practice  [LAWS70243] Accredited until 1 July 2016.

C: Trade Marks Law

Trade Marks and Unfair Competition [LAWS70046]

 

D: Trade Marks Practice

B: Professional Conduct & D: Trade Marks Practice

Trade Marks Practice [LAWS90035]

Trade Marks Practice [LAWS70243] Accredited until 1 December 2014.

E: Patent Law

Patent Law [LAWS70021]

 

F: Patent Practice

Patent Practice [LAWS70060]

 

G: Drafting of Patent Specifications

Fundamentals of Patent Drafting  [LAWS70387]

 

H: Interpretation and Validity of Patent Specifications

Interpretation and Validity of Patent Specifications [LAWS70061]

 

I : Designs Law

Designs Law and Practice [LAWS70261]

 

 

Monash University

PSB topic groups

Current accredited courses

Previous accredited courses

A1: Legal Process and
B: Professional Conduct

Legal process and professional conduct [LAW5080]

Legal process and professional conduct [LAW7477] Accredited until 1 December 2015.

A1: Legal Process

Australian Legal System [LAW7212]

 

A2: Overview of IP

Intellectual Property [LAW5340]

Intellectual Property [LAW7223]

C : Trade Marks Law

Trade Marks and Commercial Designations [LAW5316]

Trade Marks and Commercial Designations [LAW7075]

D: Trade Marks Practice

B: Professional Conduct and D: Trade Marks Practice

Trade Marks Practice [LAW7224]

Trade mark Practice [LAW5341]

 

E: Patent Law

Protecting commercial innovation: Patents and trade Secrets [LAW5321]

Protecting commercial innovation: Patents and trade Secrets [LAW7119]

F: Patent System

Patent Practice [LAW7452]

 

G: Drafting of Patent Specifications

Drafting Patent Specifications [LAW7465]

 

H: Interpretation and Validity of Patent Specifications

Interpretation and Validity of Patent Specifications [LAW7466]

 

I: Designs Law

Designs Law and Practice [LAW5346]

Designs Law and Practice [LAW7254]

 

University of Technology, Sydney

PSB topic groups

Current accredited courses

Previous accredited courses

A1: Legal Process and
A2: Overview of IP

 

Legal Process and Intellectual Property [77896] (accredited until 1 December 2015)

B: Professional Conduct

 

Professional Conduct (IP) [77892]  (accredited until
1 December 2015)

A1: Legal Process and
A2: Overview of IP
B: Professional Conduct

Preparing for Intellectual Property Practice [77905]

 

C : Trade Marks Law

Trade Marks Law [77889]

 

D: Trade Marks Practice

Trade Marks Practice [77890]

 

E: Patent Law

Patent Law [77898]

 

F: Patent System

Patent Systems [77891]

 

G: Drafting of Patent Specifications

Drafting of Patent Specifications [77894]

 

H: Interpretation and Validity of Patent Specifications

Interpretation and Validity of Patent Specifications [77895]

 

I: Designs Law

Designs Law and Practice [77893]

 

 

Queensland University of Technology

PSB Topic Group(s)

Current accredited courses

A1: Legal Process and Overview of IP

Legal Process and LWN401 General Introduction to Intellectual Property Law

C: Trade Marks Law

LWN404 Trade Marks, Domain Names and Geographical Indications

E: Patent Law

LWN402 Patents and Biotechnological Inventions

I: Designs Law

LWN405 Industrial Designs and Plant Variety Protection

Transitional provisions for registration as a patent attorney or a trade marks attorney

Patent Attorney

Regulation 23.41 of the Patents Regulations 1991 (Cth) prescribes the transitional arrangement for applicants who have already passed at least one New Zealand patent attorney exam under the New Zealand Patent Regulations when the joint registration regime commenced on 24 February 2017. These candidates may continue sitting the New Zealand patent attorney exams for a further 4 years(i.e. until 2020) under the transitional provisions in the New Zealand Patents Act 2013.

Anyone applying for registration under the transitional provisions is also exempt from meeting the academic qualification requirement for registration. If all New Zealand patent attorney exam papers are passed within the four-year period, they will be deemed to satisfy the knowledge requirements under the new joint registration regime.

Candidates that have passed all the New Zealand patent attorney exam papers must apply to be registered under the joint registration regime within six months of completing the exams.

Note that anyone relying on the transitional provisions to register under the joint registration regime is still required to provide:

  • One or more statements of skill regarding the applicant’s patents-related work experience;
  • A declaration that the applicant has not committed an offence in the last 5 years or is subject to a sentence of imprisonment;
  • A declaration (by another person) of the applicant’s good fame, integrity and character; and
  • Payment of the prescribed registration fee.

For the avoidance of doubt, any person who has not passed at least one exam paper prior to commencement of the joint regime on 24 February 2017 will not be permitted to sit New Zealand patent attorney exams during the four-year transition period.

Anyone who fails to complete all the patent attorney exam papers within the four-year transition period may apply to the Board to cross-credit any passed exam papers for the purpose of meeting one or more of the prescribed knowledge requirements for qualifying for registration under the joint registration regime. Note that the Board is under no obligation to cross-credit any passes.

Patent Attorney Registration under the Trans Tasman Regime

Trade Marks Attorney

Regulation 22.15 of the Trade Marks Regulations 1995 (Cth) prescribes the transitional arrangement for New Zealand patent attorneys to apply for registration as an Australian-registered trade marks attorney within 12 months of the regime’s commencement date (24 February 2017).

Transitional applicants do not need to meet the usual academic and knowledge requirements for registration as trade marks attorneys. Rather, applicants must provide a statement of experience that satisfies the Designated Manager that the applicant’s level of competency in trade marks law and practice is sufficient to warrant the applicant becoming a registered trade marks attorney.

The applicant must also provide a declaration that the applicant has not, in the last five years, been convicted of an offence mentioned in subregulation 22.15(4), and is not under sentence of imprisonment for an offence mentioned in subregulation 22.15(5). They must also pay the prescribed registration fee.

Guidance note – Statement of Experience April 2017

Trade Marks Attorney Registration under the Trans Tasman Regime

More information