Qualifications

How to register

Legislation

Fees

Accredited courses

Exemptions

Patent Attorney Registration

Registration Requirements

To apply to become a patent attorney, you must meet the following requirements:

Knowledge Requirements

Meet the requirements of Schedule 5 as described below and in the guidelines.

Academic Requirements

Hold a degree, diploma, advanced diploma or graduate diploma under the Australian Qualification Framework that is in a field of technology that contains potentially patentable subject matter and is awarded in the Higher Education Sector.

Pre Registration Employment Requirements

Applicants must provide a statement or statements (by a registered attorney of 5 years duration) that shows they:

Statement of Skill

have been employed in a position or positions that provide the applicant experience in the following skills:

searching patent records;
preparation filing and prosecution of patent applications in Australia and with other countries;
drafting of patent specifications;
and provision of advice on interpretation, infringement and validity;

Employment

have been employed in such a position for at least 2 continuous years or a total of 2 years within 5 continuous years
There are transitional provisions applicable to employment requirements on applications received up to 30 June 2009. Please contact the PSB Secretariat if you need further information.

Personal Requirements

be of good fame, integrity or character
not have been convicted within the past five years of offences against Patents, Trade Marks and Designs legislation

Residency

be ordinarily resident in Australia

Knowledge requirements

The knowledge requirements for registration as a patent attorney are prescribed in Regulation 20.8 of the Patent Regulations 1991 and Schedule 5 to the Regulations.

Schedule 5

The courses of study should 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, and
an understanding of the required standard of professional conduct.

These five parts of Schedule 5 equate to nine topic groups previously prescribed for registration as a patent attorney These topics groups are available through accredited courses.

The nine topic groups are listed below:

A - Legal Process and Overview of Intellectual Property
B - Professional Conduct
C - Trade Mark Law
D - Trade Mark Practice
E - Patent Law
F - Patent System
G - Drafting Patent Specifications
H - Interpretation and Validity of Patent Specifications
I - Designs

You may meet the knowledge requirements by:

Satisfying the requirements of an accredited course of study conducted by an appropriate tertiary institution
Obtaining from the Board an exemption on the basis of a course of study that is the same as, or similar to the topic group prescribed. Exemptions granted by the Board are considered to be passes.
The Board may be satisfied that an applicant has the knowledge of intellectual property law and practice that is required for a person to practice as a patent attorney, despite the fact that the applicant does not meet every requirement set out in Schedule 5.

Academic qualification requirements

The academic qualification requirements for registration are specified in Regulation 20.6 of the Patent and Trade Marks Legislation Amendment Regulations 2008.

The qualification should be -

An Australian Qualification Framework qualification from the higher education sector that the Board is satisfied is an appropriate qualification for a patent attorney or;
A qualification awarded by an overseas institution that the Board is satisfied is equivalent to an higher education sector AQF qualification, and also
in a field of technology that contains potentially patentable subject matter, and
involves a depth of study that the Board considers is sufficient to provide an appropriate foundation for practice as a patent attorney
the Australian Qualification Framework consists of 12 levels of nationally recognised types of qualifications from institutions which are categorised into three sectors (schools, vocational and higher education).

Board approval of academic qualifications

It is strongly recommended that anyone seeking registration apply to the Board for approval of their academic qualifications before commencing any study of the nine topic groups. The Board has written guidelines on applying for approval of academic qualifications.

(Link to Guidelines PDF Document) ( Link to Application Form)

The Board requires applicants to submit their academic qualifications to the Board so that the Board can determine that the qualification meets the above criteria. The Board also has to reasonably satisfied that the person holds the qualification.

The Board considers applications for approval of academic qualifications at each of its three meetings held during the year. See What’s New on the home page for the next meeting date. The Secretary will take applications for consideration at these meetings up until a month before the next meeting date. Late applications will usually not be accepted.

Employment Requirements

For registration as a patent attorney, a person must have been employed in a position or positions that provide experience in the following capacities:

the searching of patent records;
the preparation, filing, and prosecution of patent applications in Australia;
the preparation,, filing, and prosecution of patent applications in other countries and organisations, particularly countries and organisations that are regarded as major trading parties with Australia;
the drafting patent specifications; and
the provision of advice on the interpretation, validity and infringement of patents.

Further, the person must have been employed in the position or positions for at least:

2 continuous years; or
a total of 2 years within 5 continuous years.

Statement of Skill

The statement of skill should be made by a registered patent attorney who has been registered for at least 5 years. The statement should certify that the applicant has the required skills and explain how the applicant acquired the skills. More than one statement can be provided to cover the full list of skills.

Where the applicant is unable to provide such a declaration, he or she can apply to the Board for a statement by providing a statutory declaration as to why he is making the request; provide a portfolio of work and/or statements from a variety of sources etc.

The Board has provided information on the Statement of Skill in the Pre-Registration Employment Guidelines

Employment

Applicants for registration have to prove to the Board that they have been employed in such a position/positions for at least 2 continuous years or a total of 2 years within 5 continuous years.
There are transitional provisions applicable to employment requirements on applications received up to 30 June 2009.

as a technical assistant in a patent attorney practice
in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporations Law, or
in the Patent Office as an examiner of patents

for either -

one year continuously, or
at least one year within a continuous period of two years.

Please contact the Secretary, PSB to discuss the transitional employment provisions.

Residency requirements

Section 198(4) of the Patents Act 1990 requires that you must be ordinarily resident in Australia to be eligible for registration.

Section 198 (7) of the Patents Act 1990 defines that you are ordinarily a resident if -

you have your home in Australia, or
Australia is the country of your permanent abode even though you may be temporarily absent from Australia.

You are not taken to be an ordinary resident in Australia if you live in Australia for a special or temporary purpose.

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, and

not be under sentence of imprisonment for a prescribed offence.

Regulation 20.3 of the Patent Regulations 1991 provides that must not in the last five years be convicted of:

a prescribed offence is a conviction of an offence against the Patents Act 1990, Trade Marks Act 1995 or Designs Act2003, and
under a sentence for a prescribed offence is an offence for dishonesty for which the maximum penalty is imprisonment for at least two years.

Regulation 20.12 of the Patent Regulations 1991 lists the prescribed offences.