Trade Marks Attorney Registration

Registration Requirements

Before applying to become a registered trade marks attorney, you must meet the following requirements:

Knowledge requirements

• Meet the requirements of Schedule 5 as described below and in the Trade Marks Attorney Knowledge Requirement Guidelines.

Academic qualification requirements

• Hold a degree, diploma, advanced diploma or graduate diploma under the Australian Qualification Framework and is awarded in the Higher Education Sector.

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

Knowledge requirements

The knowledge requirements for registration as a trade marks attorney are prescribed in Schedule 5 of the Trade Marks Regulations 1995 and are set out in the Guidelines of Knowledge Requirements for Trade Marks Attorneys.

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.

Details of Schedule 5 which equate to the appropriate knowledge required by a Trade Marks Attorney are detailed below with the equivalent Topic Groups.

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.

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Academic qualification requirements

The academic qualification requirements for registration are specified in Regulation 20.5 of the Trade Marks Regulations 1995.

The qualification should be:

• An Australian Qualification Framework qualification from the higher education sector or;
• A qualification awarded by an overseas institution that the Board is satisfied is equivalent to an higher education sector AQF qualification,

The Australian Qualification Framework (commonly known as the 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 Board requires applicants to submit their academic qualifications so that the Board can determine that the qualification meets the above criteria. The Board also has to be reasonably satisfied that the person holds the qualification. Link to: application form

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 Trade Marks Regulations 1995 provides that you 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.

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