Registration requirements for patent attorneys and trade marks attorneys
There are essential conditions to be attained by both trade marks attorneys and patent attorneys seeking registration with the Trans-Tasman IP Attorneys Board (the Board) including knowledge, academic, personal, employment, and skill.
The knowledge requirements for registration as a patent attorney are prescribed in Regulation 20.8 of the Patents Regulations 1991 and Schedule 5 to these regulations.
The knowledge requirements for registration as a trade marks attorney are prescribed in Regulation 20.8 of the Trade Marks Regulations 1995 and Schedule 5 to the Patents Regulations 1991.
Schedule 5 requires that the courses of study give you an appropriate level of:
knowledge and practical application so as to give advice about applicable categories of protection for particular activities
appreciation of the advantages of each form of protection for clients
understanding of how to get and maintain appropriate protection for clients
an understanding of the required standard of professional conduct
Knowledge requirements for patent attorneys
Schedule 5 equates to nine topic groups previously prescribed for registration as a patent attorney. These topics groups are covered in accredited courses.
The nine topic groups are:
Legal process and overview of intellectual property
Trade marks law
Trade marks practice
Drafting patent specifications
Interpretation and validity of patent specifications
Knowledge requirements for trade marks attorneys
Details of Schedule 5 that equate to the appropriate knowledge required by a trade marks attorney are detailed below with the equivalent topic groups.
The four topic groups are:
Legal process and overview of intellectual property
Trade marks law
Trade marks practice
How to meet requirements
You may meet the knowledge requirements in one of three ways:
Completing an accredited course of study conducted by an appropriate tertiary institution.
Obtaining an exemption from knowledge requirements from the Board on the basis of a course of study that is the same as, or similar to the topic group prescribed. Practical experience alone is not sufficient for an exemption to be granted. (Exemptions granted by the Board are considered to be passes in regards to obtaining approval of knowledge requirements).
The Australian Qualification Framework (AQF ) is a unified system of national qualifications in schools, vocational education and training (TAFEs and private providers) and the higher education sector (mainly universities). The New Zealand Qualifications Framework (NZQF) is similar to the AQF.
Qualifications to be a patent attorney
The academic qualification requirements for registration as a patent attorney are specified in Regulation 20.6 of the Patents Regulations 1991.
The qualification should be:
a Level 5 or higher qualification under the Australian Qualifications Framework (AQF) or the New Zealand Qualifications Framework (NZQF) that the Board is satisfied is an appropriate qualification for a patent attorney
a qualification awarded by an overseas institution that the Board is satisfied is equivalent to a Level 5 or higher AQF, or NZQF, qualification
in a field of technology that contains potentially patentable subject matter and
involving a depth of study that Board considers is sufficient to provide an appropriate foundation for practice as a patent attorney.
It is strongly recommended that applicants seeking to be registered as a patent attorney have their academic qualifications (that is, degrees, doctorates etc. in a field of patentable subject matter) formally approved by the Board before they commence study of the nine topic groups (the knowledge requirements specifically concerning attorney practice).
Getting the academic qualifications approved first will minimise the likelihood that an applicant's time and money is wasted on study that will not receive approval for registration as a patent attorney.
The Board seeks a high level of academic science/technology qualification that provides detailed knowledge (both in breadth and depth) of a patentable field of subject matter.
The breadth of study may be achieved by studying a significant number of subjects in the relevant field in the early years of a degree course.
The depth of study may be achieved by studying more advanced subjects in the same discipline in the later years of the same degree, including some subjects in that discipline in the final year of the degree. This will usually correspond to a ‘major’ in the discipline.
There are some disciplines in which the outcome of research and development activities will commonly be patentable subject matter. These include biotechnology, chemical engineering, biochemistry, chemistry, medical devices, applied physics, mechanical engineering, electrical engineering, mechatronics and electronics. A degree with a major in these fields will generally be acceptable.
Applicants should note that some broad disciplines contain mixed, sub-disciplines of both patentable and non-patentable subject matter. It is permissible for some study to be in a sub-discipline that is not patentable subject matter, provided that the necessary breadth and depth of study is achieved in sub-disciplines which contain patentable subject matter.
The Board cannot pre-approve academic qualifications that have not yet been obtained as both courses and patentable subject matter may change over time. However, candidates can maximise the probability that their qualifications will be approved by:
taking courses of study and individual units in which the patentable subject matter is the primary focus, rather than a briefly covered component of broader study
attending academic institutions with strong reputations and wide recognition, particularly in the field being studied
being aware of, and monitoring, legislation and court decisions determining what is patentable subject matter
completing the course of study as quickly as possible, and then applying to the Board for approval of the qualification as soon as the course is completed.
Qualifications to be a trade marks attorney
The academic qualifications requirements for registration are specified in Regulation 20.5 of the Trade Marks Regulations 1995.
The qualification should be:
a Level 5 or higher AQF qualification
a qualification awarded by an overseas institution that the Board is satisfied is equivalent to a Level 5 or higher AQF qualification.
The Board considers applications for approval of academic qualifications at each of its three meetings held during the year.
The registration process requires applicants to submit their academic qualifications for approval. The Board will determine whether the requirements are met.
The Board Secretary will take applications for consideration at these meetings up until a month before the next meeting date. Late applications will not be accepted and held until the next board meeting.
Section 198 of the Patents Act 1990 provides that you must:
be of good fame, integrity and character
not have been convicted of a prescribed offence during the past five years
not be under sentence of imprisonment for a prescribed offence.
Regulation 20.12 of the Patents Regulations 1991 lists the prescribed offences for patent attorneys, whilst regulation 20.3 of the Trade Marks Regulations 1995 lists the prescribed offences for trade marks attorneys.
Employment requirements for patent attorneys
For registration as a patent attorney, a person must have been employed in a position or positions that provide experience in:
- searching patent records
- preparing, filing and prosecuting patent applications
- drafting patent specifications
- providing advice on the interpretation, validity and infringement of patents
The person must also have been employed in the position or positions for at least:
two continuous years or a total of two years within five continuous years.
The experience is intended to ensure that the person has an appropriate foundation for practice as a patent attorney in both Australia and New Zealand.
Guidelines - employment
The Board has issued the following guidelines on employment requirements for patent attorneys. These guidelines are intended to provide an explanation of the required experience and the process by which it is assessed.
The Board does not register patent attorneys; that function is the responsibility of the Designated Manager under the provisions of Section 200A of the Patents Act 1990. The Designated Manager is appointed by the Secretary of the Department of Industry, Science, Energy and Resources.
Currently, the Designated Manager is the Director General of IP Australia, Mr Michael Schwager.
The broad process is that a person seeking registration obtains a statement of skill and provides it to the Designated Manager as part of the evidence required for registration.
The underlying purpose of the statement of skill is to assure the Designated Manager that the person seeking registration has the requisite skills and experience to ensure that the public receives only high quality services, especially with respect to the complex technical areas of patent drafting and prosecution.
Statement of skill for patent attorneys
A statement of skill is a statement by a registered patent attorney that, in the opinion of that registered patent attorney, the person concerned has experience in one or more of the necessary skills. The registered patent attorney must have at least five years post-registration experience prior to the period covered by the statement. There may be several statements of skill issued by different registered patent attorneys which together cover all of the prescribed skills.
The statement of skill must:
(a) contain details of the basis of the opinion that the person concerned (the applicant) has the required experience; and
(b) include details of the evidence on which the opinion is based.
The statement of skill must refer to the specific skills covered by the statement and also the period of employment. The specific skills, including preparing, filing and prosecuting patent applications in Australia and New Zealand and other specified countries, all relate to undertaking work only on behalf of clients. Experience as an examiner of patents does not satisfy this requirement as it was not performed in the service of a client.
If the applicant is unable to obtain a statement of skill from a registered patent attorney, then the Board may, in certain circumstances and upon request, prepare a statement of skill in relation to the applicant. The applicant should communicate with the Secretary as to why they are unable to obtain a statement as the Board does not routinely provide statements.
Statement of skill prepared by a registered patent attorney
It is necessary for a person seeking registration to follow this procedure unless there are circumstances precluding its use (e.g. the registered patent attorney has retired or is otherwise unable to provide a statement).
The statement of skill must be made by a patent attorney who has been registered in Australia or New Zealand for at least five years prior to the period covered by the statement, and who is in a position to comment on the person's skills.
It should be noted that 'registered patent attorney' is a term defined in the Patents Act 1990. As such, the term "registered patent attorney" means a person registered as a patent attorney in Australia or New Zealand.
The assessment should comprise of a statement from the registered patent attorney:
(a) explaining the duration and the nature of the employment
(b) describing the type of work performed in order to acquire the required experience
(c) explaining how the registered patent attorney making the statement came to the decision that the person possesses the required experience
(d) explaining why the registered patent attorney making the statement is in a position to comment on the experience of the person concerned.
Typically, the statement would be made by a registered patent attorney who has supervised the work of the person concerned during the relevant period of employment. Where the supervision has been provided by two or more registered patent attorneys over the relevant period of employment, any one of the registered patent attorneys may provide the statement of skill, provided that he or she is in a position to do so. Alternatively, there may be several statements of skill, each provided by a different registered patent attorney and directed to different aspects of the experience.
Where the registered patent attorney providing the statement of skill has not supervised the person concerned to an extent to be able to comment on all aspects of the experience, that registered patent attorney may consult with another registered patent attorney who has provided the necessary supervision, in order to be in a position to comment. Alternatively, or additionally, the registered patent attorney providing the statement of skill may inspect examples of work produced by the person seeking registration in order to be in a position to comment.
A statement of skill from a registered patent attorney who merely knows the person will not be suitable; the statement of skill must be by a registered patent attorney who has either supervised the work being assessed or is otherwise in a position to provide the statement.
Statement of skill prepared by the Board
There may be circumstances where a person has the required experience but is unable to meet the requirement for a statement of skill by a registered patent attorney who has at least five years post-registration experience prior to the period covered by the statement.
In such circumstances, the person may apply to the Board for a statement of skill. In applying for the statement of skill, the person must provide a statement (in the form of a declaration) that:
(i) explains why the person is unable to meet the requirement for a statement of skill by a registered patent attorney who has at least five years post-registration experience prior to the period covered by the statement
(ii) identifies the duration and nature of the experience
(iii) describes activities undertaken involving practical application of the various aspects of the required experience and
(iv) demonstrates that that the experience is sufficient to provide the required level of experience.
In relation to item (iii), it is expected that the declaration should be accompanied by material supporting the assertion that the required experience has been acquired. The supporting material may, for instance, comprise a portfolio of work performed, subject to confidentiality and privilege constraints.
Additionally, the person may be required to confer with one or more members of the Board to demonstrate to the satisfaction of the Board that the required experience has been acquired.
If the Board is satisfied, it may issue a statement of skill in relation to the person concerned.
Circumstances in which it may be appropriate to seek a statement of skill from the Board include:
where a person has acquired the required experience through patent attorney work under the supervision of a registered patent attorney, but the patent attorney was not registered for five years prior to the commencement of the period covered by the statement.
where a person considers that he or she has acquired the required experience but the supervising patent attorney declines or is unable (for any reason) to provide a statement of skill
The Board will not consider any requests for a statement of skill from applicants who have never been employed under the supervision of a registered patent attorney.
Role of the Designated Manager
The Designated Manager must enter a person’s name on the Register of Patent Attorneys if that person satisfies the requirements of section 198 of the Patents Act 1991.
One of the conditions in section 198 relates to employment. Regulation 20.10 of the Patents Regulations 1990 provides that an applicant must have been employed in a position or positions that provide experience in certain skills. There are a number of skill sets required including preparing, filing and prosecuting patent applications, searching patent records and drafting patent specifications and they all relate to work on behalf of clients. Regulation 20.10(1) (a) prescribes the particular skills required. Experience as an examiner of patents, whether obtained in Australia or another jurisdiction, will not satisfy the requirements as it was not performed in the service of a client.
An applicant for registration as a patent attorney must include with their application one or more statements of skill in support of their application. The statement(s) must provide enough evidence so that the Designated Manager can be satisfied that the applicant has the required skills. The Designated Manager must be satisfied that a registered patent attorney providing the statement of skill is in a position to comment on the experience of the person concerned.
Practice Note requirements
This Practice Note seeks to provide some guidance on what is required in a statement of skill.
(i) searching patent records
(ii) preparing, filing and prosecuting patent applications in Australia and New Zealand
(iii) preparing, filing and prosecuting patent applications in other countries and organisations, particularly countries and organisations that are regarded as major trading partners with Australia and New Zealand
(iv) drafting patent specifications
(v) providing advice on the interpretation, validity and infringement of patents.
The applicant must also have been employed in a position, or positions, of a kind that provided the applicant with experience in these skills for at least two continuous years or a total of two years within five continuous years (see Reg. 20 10 (1)(b)). The two-year period is taken as a reference to two years of full-time employment—the period will need to be longer than two years if the applicant is not employed on a full-time basis.
Reg 20.10 also provides examples of major trading partners for sub-paragraph (a) (iii).
Sometimes, an individual registered patent attorney will not be able to testify as to all five sets of the skills. In this case, the applicant will have to bring forward more than one statement of skill from appropriate registered attorneys (see Reg. 20.10(2)).
Levels of details required
Regulation 20.11(2) is crucial in considering the level of detail which should be in the statement of skill. It provides that the statement of skill must:
(a) contain details of the basis of the opinion that the applicant has the required experience and
(b) include details of the evidence on which the opinion is based, described by reference to:
(c) the skills mentioned in paragraph 20.10 (1)(a) and
(d) the employment requirements mentioned in paragraph 20.10 (1) (b).
A statement of skill must not just assert the possession of the relevant skills but must also contain details of the basis of that opinion and the evidence.
Accordingly, statements of skill which are expressed in very general terms about the types of experience the applicant has acquired will not usually suffice. Some detail is required.
It is not possible to specify any particular type of information which would always be necessary and sufficient. However, some points of guidance can be provided:
Evidence of the number of matters can be significant. Statements of skill about providing advice on interpretation, for instance, would have more weight if they referred to a large number of matters which had involved the provision of such advice. A statement of skill that could be read as referring to one or two instances of providing advice, over a two year period, will not easily satisfy the Designated Manager that the requisite level of skill has been attained.
One important factor which can be useful in some cases is the size of practice. If an attorney has primary responsibility for a large number of files within the office, and these files relate to a broad range of applications that the attorney has responsibility for prosecuting, this would go a long way towards demonstrating that the requisite level of skills in that area was present.
Some statements of skill have made effective use of anecdotes by describing particular matters that were complex or difficult or where the applicant took a strong lead in a manner that would indicate strong skills as a registered patent attorney. These can contribute to an overall impression of an applicant who is ready to be admitted to the profession.
The statement of skill is perhaps best thought of as a submission to the Designated Manager, which is intended to convince the Designated Manager that the particular application is worthy (in a skills sense) of admission to the profession.
Because it is not possible in a guidance note such as this to deal with every possible situation, applicants may choose to discuss the matter with the Secretary to the Board before submitting their application. The responsibility to satisfy the Designated Manager as to the statutory requirements is on the applicant and the Secretary will be unable to offer more than general advice about how particular issues might be approached in the statement of skill.
A person seeking registration as a patent attorney must have been employed in a position, or positions, that provide experience in the following skills:
searching of patent records
preparing, filing and prosecuting of patent applications in Australia and New Zealand
preparing, filing and prosecuting of patent applications in other countries and organisations particularly countries and organisations that are regarded as major trading partners with Australia and New Zealand
drafting patent specifications
providing advice on the interpretation, validity and infringement of patents.
It is expected that the experience would also include exposure to, or involvement in, opposition procedures, as well as a general understanding of the management of an IP portfolio and the management of a patent attorney practice.
Patent attorney work includes searching patent office databases and other intellectual property information services for various purposes, including ascertaining status information on patent cases, obtaining an indication whether an invention is novel, or identifying whether the use of a product or process (for example) is infringing some other patent right.
A person seeking registration as a patent attorney must have skills in searching databases for bibliographic data on patent cases, conducting novelty searches and infringement searches, and analysing and advising on the outcomes of such searches.
It is expected that a person seeking registration as a patent attorney would have had direct experience in performing such activities, preferably under the supervision of a registered patent attorney.
Preparing, filing and prosecuting applications
Preparing, filing and prosecuting patent applications in Australia and in other countries and organisations, particularly countries and organisations that are regarded as major trading parties with Australia, demands a high level of professional competence which can only be acquired through exposure to such activities under the supervision of a registered patent attorney. This is particularly so in relation to prosecution of patent applications, which requires an in-depth knowledge of the practices and procedures of the relevant jurisdiction.
It is expected that a person seeking registration as a patent attorney would have had direct experience in performing patent attorney work involving:
preparing and filing provisional and complete applications in Australia and New Zealand
preparing and filing international applications under the Patent Cooperation Treaty
instructing agents with respect to the filing of patent applications in other jurisdictions (including in particular Europe, Japan, People’s Republic of China, Republic of Korea and the USA)
attending to the filing of patent applications in New Zealand, either by filing there directly or by instructing agents in New Zealand
A person seeking registration as a patent attorney should have had direct experience in performing patent attorney work involving:
prosecuting complete patent applications in Australia and New Zealand
instructing agents in respect of prosecution of patent applications in other jurisdictions
prosecuting international applications under the Patent Cooperation Treaty through the international phase
interpreting and amending the claims of a patent specification according to the laws and practices of Australia and New Zealand and other jurisdictions.
Experience in drafting patent specifications
Registration as a patent attorney gives that attorney an exclusive right to prepare patent specifications and amendments to patent specifications.
Drafting patent specifications is a skill that requires informed technical communication with inventors or their representatives, and an in-depth knowledge of requirements in the relevant jurisdiction. As such, drafting patent specifications is a skill which requires development under the supervision of a registered patent attorney in an environment where there is exposure to inventors or their representatives and also the demands of real-time drafting.
It is expected that a person seeking registration as a patent attorney would have had direct experience in performing patent attorney work involving:
conferring with clients in relation to inventions for which patent specifications are to be drafted (including taking instructions in relation to details of the inventions and any known prior art)
drafting provisional and complete specifications for Australia and New Zealand with a scope and set of claims that satisfactorily protects a client's interests in the invention described in the patent specification
drafting specifications for international applications under the Patent Cooperation Treaty, and for patent applications in other jurisdictions, with a scope and set of claims that satisfactorily protects a client's interests in the invention described in the patent specification
Advising on the interpretation, validity and infringement of patents
Giving advice about the validity, or infringement, of patents is a highly skilled role that demands informed communication between a client (or other party requiring advice) and the registered patent attorney in order to prepare and provide legal opinions. As such, provision of such advice requires experience in an environment where there is exposure to clients (or other parties requiring advice) and their needs.
A person seeking registration as a patent attorney must have experience in advising on the interpretation, validity and infringement of Australian and New Zealand patents acquired through exposure to such activities under the supervision of a registered patent attorney.
considering Australian and New Zealand patents and prior art material deemed to be relevant to the patents, and providing opinions as to the validity or otherwise of the patents
considering Australian and New Zealand patents and alleged or potential infringements thereof, and providing opinions in relation to the issue of infringement.
The opinions need to have exhibited a sound understanding of the principles of claim interpretation, construction and validity under Australian law.
Acquisition of the experience
It is expected that the experience would be at a level corresponding to that which would ordinarily be acquired through the performance of patent attorney work in Australia and/or New Zealand for a period of at least two years under the supervision of a patent attorney registered in Australia and New Zealand.
Some of the required experience may, in certain circumstances, be achieved through relevant work in other areas within the field of intellectual property.
For example, a person may acquire some experience, either wholly or in part, whilst working in a corporate environment.