Registration requirements

Registration requirements for patent attorneys and trade marks attorneys

There are essential conditions to be attained when seeking registration with the Trans-Tasman IP Attorneys Board (the Board) including qualification, knowledge, personal, employment, and skill.

Academic qualifications

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 become 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.

Board approval

The Board considers applications for approval of academic qualifications at each of its three meetings held during the year.

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.

Qualifications to become a trade mark 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 Secretary has delegation, outside of a Board meeting, to approve Australian qualifications.

Knowledge requirements

Knowledge requirements for patent attorneys

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  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 requirements for registration as a patent attorney 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 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 Board in relation to that topic group.

The knowledge gained from accredited studies remains valid for a maximum of 10 years after the date of completion of study of the particular accredited course.

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 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’.

Applicants should note that an accredited course of study for topic groups C and D for registration as a trade marks attorney will not support an application for exemption for the same topic group for registration as a trans-Tasman patent attorney because the trade marks attorney course does not have sufficient New Zealand content.

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, but the Board cannot be satisfied if the knowledge on which the applicant relies was gained more than 10 years prior to the date of the application.

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 validated by the applicant supplying a certified copy of their academic transcript
  • completing a mapping of the topic requirements against the course undertaken, together with evidence of the inclusion of the particular component
  • the approved application 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.  The final page of each form includes a listing of the necessary topics that need to be mapped out by the applicant.
  • 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 broad 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, 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 it is satisfied 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.

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 substantial 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 issues being that of content and the successful completion of a course of study. The Board cannot consider an applicant’s work experience when determining whether to grant an exemption.

Status of exemptions granted by universities

Universities and other accredited providers sometimes grant exemptions or waivers of prerequisites for subjects in their academic programs 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 any 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 will 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 7 year period or longer as allowed by the Board.
  • Some combination of the above dot points.
  • 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 Patents Regulations 1991.

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.

 

Knowledge requirements for trade marks attorneys

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 Schedule 5 to the Patents Regulations 1991 (Cth) [and modified by regulation 20.11 of the Trade Marks Regulations 1995 (Cth)] 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 (Cth) (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 very similar to the first four topic groups that will satisfy the knowledge requirements for registration as a patent attorney (topic groups A - D). While trade marks attorney candidates study the accredited patent attorney courses, the New Zealand content is not a required part of the trade marks attorney Knowledge requirements. Candidates should therefore 'check' the box about passing an accredited course of study for trans-Tasman Patent Attorney on the application from when they apply for approval of knowledge requirements for trade marks attorneys.

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 Board 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 Marks 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 Board accredited course of study
  • gaining an exemption in relation to one or more courses of study (topic groups)
  • a combination of the above dot points
  • 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 Board in relation to that topic group.

The knowledge gained from accredited studies remains valid for a maximum of 10 years after the date of completion of study of the particular accredited course.

Exemptions for non-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’.

Applicants should note that an accredited course of study for topic groups A1, A2, B, C and D for registration as a trans-Tasman patent attorney will support an application for exemption for the same topic group for registration as a trade marks attorney because the respective courses have the same or similar Australian content.

Relevant studies completed within 7 years prior to application will normally be eligible for an exemption. Older qualifications will be considered on a case by case basis, but the Board cannot be satisfied if the knowledge on which the applicant relies was gained more than 10 years prior to the date of the application.

In considering whether a course completed over 7 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 5 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 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 validated by the applicant supplying a certified copy of their academic transcript
  • completing a mapping of the topic requirements against the course undertaken, together with evidence of the inclusion of the particular component.
  • the approved application 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. The final page of each form includes a listing of the necessary topics that need to be mapped out by the applicant.
  • 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 broad 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 or tutoring the course that can provide the necessary information.

Minor shortcomings within topic groups

The regulations permit the Board to declare that it is satisfied that an applicant has the required knowledge to practice as a trade marks attorney even though they have not met all of the knowledge requirements of Schedule 5.

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.

The Board 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 substantial Australian content. Generally speaking exemptions are granted on a case by case basis with the crucial issues being that of content and the successful completion of a course of study. The Board cannot consider an applicant’s work experience when determining whether to grant an exemption.

Status of exemptions granted by universities

Universities and other accredited providers sometimes 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 stipulate that the requisite knowledge must be gained through formal study at a university or other approved institution.

Knowledge gained by experience will 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 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.
  • A combination of the above dot points.
  • 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 (Cth).

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. TTIPAB may extend either period in individual cases.

Personal requirements

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:

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.

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.

Required skills

See Regulation 20.10 (1)(a)

(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.

Employment history

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 searching

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.