Legislation

Patents Act 1990

Section 198 of the Patents Act 1990 specifies the provisions for registration.

The relevant sub-sections of Section 198 provide:

(4) The Designated Manager must register as a patent attorney a person who:

(a) is ordinarily resident in Australia; and

(b) holds such qualifications as are specified in, or ascertained in accordance with, the regulations; and

(c) has been employed as prescribed for not less that the prescribed period; and

(d) is of good fame, integrity and character; and

(e) has not been convicted of a prescribed offence during the previous 5 years; and

(f) is not under sentence of imprisonment for a prescribed offence.

The registration is to consist of entering the persons name in the Register of Patent Attorneys.

(5) A qualification specified in, or ascertained in accordance with, regulations made for the purpose of paragraph (4)(b) may consist of passing an examination conducted by the Professional Standards Board. This subsection does not limit paragraph (4)(b).

(6) Paragraphs (4)(e) and (f) do not limit paragraph (4)(d).

(7) For the purpose of this section, a person is taken to be ordinarily resident in Australia if:

(a) the person has his or her home in Australia; or

(b) Australia is the country of his or her permanent abode even though he or she is temporarily absent from Australia;

but the person is taken not to be ordinarily resident in Australia if he or she resides in Australia for a special or temporary purpose only.

(8) A reference in this section to conviction of an offence includes a reference to the making of an order under section 19B of the Crimes Act 1914, or a corresponding provision of a law of a State or a Territory, in relation to the offence.

Patents Regulations 1991

Part 2 of Chapter 20 of the Patents Regulations prescribes necessary provisions for obtaining registration for the first time.

Regulation 20.3 of the Patents Regulations provides:

20.3 (1) For paragraph 198(4)(b) of the Act, the qualifications are:

(a) for each topic group mentioned in Schedule 5 - a pass in:

(i) a course of study, that includes the subject matter in the topic group accredited by the Board; or

(ii) the examination conducted by the Board;

and

(b) an award or the entitlement to an award of a qualification mentioned in Schedule 6.

(2) For paragraph 1(a), an exemption under regulation 20.13 is taken to be a pass in the topic group for which the exemption is granted.

(3) For paragraph 198(4)(c) of the Act, the person must be employed:

(a) in any of the following capacities:

(i) as a technical assistant in a patent attorney's practice;

(ii) in employment in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporations Law;

(iii) in the Patent Office as an examiner of patents under the Act or the 1952 Act; and

(b) for either

(i) 1 year continuously; or

(ii) at least 1 year within 2 continuous years.

(4) For paragraph 198(4)(e) of the Act, an offence against the Act, the Designs Act 1906 or the Trade Marks Act 1995 is a prescribed offence.

(5) For paragraph 198(4)(f) of the Act, an offence of dishonesty for which the maximum penalty is imprisonment for at least 2 years is a prescribed offence."