Why become incorporated?
Attorneys who become incorporated will have a wider choice of business models open to them. This brings them into line with options available to other professions such as the legal profession.
Where can attorneys become incorporated?
Trade marks attorney companies can only be incorporated with a company name that is registered with ASIC because New Zealand does not have a regulated trade marks attorney profession.
Where can an incorporated attorney practice?
An incorporated patent attorney is entitled to practice in any part of Australia and New Zealand so long as the patent attorney’s name remains on the Register of Patent Attorneys.
An incorporated trade marks attorney is entitled to practice in any part of Australia so long as the trade marks attorney’s name remains on the Register of Trade Marks Attorneys.
Where is the form to register as an incorporated patent or trade marks attorney?
You can download the respective form from our forms page.
A separate application form needs to be completed for each registration as either an incorporated patent attorney or an incorporated trade marks attorney.
Why do I need to have insurance?
The public will be protected by knowing that incorporated patent and/or trade marks attorneys will have appropriate professional indemnity insurance.
Also, the legislation provides that the Designated Manager may remove the name of an incorporated attorney from the Register of Patent Attorneys and/or the Register of Trade Marks Attorneys if the incorporated attorney does not maintain ‘adequate and appropriate’ professional indemnity insurance.
How much professional indemnity insurance do we need to incorporate?
The regulations state that the professional indemnity insurance has to be 'adequate and appropriate'.
In general, the quantum of the insured amount will be assessed by the insurer based on gross fees, type of work and other circumstances.
There is no formula or no set amount that the Designated Manager requires.
A Certificate of Currency supplied to the company by the insurer is adequate proof to the Designated Manager that the requirement is met. This Certificate should specify the name of the incorporated attorney; the quantum of the insured amount; together with the services covered by the policy (such as, at least, patent attorney services for an incorporated patent attorney and/or trade marks attorney services for an incorporated trade marks attorney).
Should a sole practitioner apply for incorporation as an attorney?
The decision to become an incorporated attorney is entirely up to you, as the legislation does not require individual attorneys to incorporate.
The change to allow incorporation in Australia or New Zealand is to provide greater flexibility and further options in business models.
IP Australia and the Board recommend that appropriate legal and business advice should be sought prior to making a decision to incorporate.
How much does the process of becoming incorporated cost?
The fee for a company to apply to become an incorporated patent and/or trade marks attorney is AU$350 for each registration and it is payable to IP Australia.
A yearly renewal of fee of AU$400 (or AU$600 if registered for both patents and trade marks) is then required to be paid to IP Australia to maintain the registration.
Do incorporated patent or trade marks attorneys have other requirements, such as special continuing professional education (CPE)?
Some of the requirements for individual attorneys (such as CPE) do not apply to incorporated patent and/or trade marks attorneys.
However, all incorporated attorneys need to pay their annual renewal fee(s) to retain their registration. The existing requirements for individual attorneys to maintain their own attorney registration will still apply, regardless of whether they are employed as part of an incorporated patent and/or trade marks attorney practice.
Incorporated attorneys also need to supply a copy of their Certificate of Currency for their professional indemnity insurance to the Designated Manager every year. This copy should be supplied shortly after a new Certificate is issued.
Lastly, an incorporated attorney must, at all times, have at least one registered attorney director – this being an individual patent attorney for an incorporated patent attorney, or an individual trade marks attorney for an incorporated trade marks attorney.
Where can I read the regulations related to this subject?
The regulations relating to Incorporated Patent Attorneys are set out in Chapter 20A of the Patents Regulations 1991 (Cth) and Part 6 of the Patents Act 2013 (NZ). The regulations relating to Incorporated Trade Marks Attorneys are set out in Part 20A of the Trade Marks Regulations 1995 (Cth).