Guidelines on knowledge requirements for patent attorneys

Guidelines on knowledge requirements for patent attorneys

Purpose of these guidelines

These guidelines have been written by the Professional Standards Board for Patent and Trade Marks Attorneys (PSB) to provide guidance to an applicant seeking registration as a patent attorney.

An applicant cannot be registered as a patent attorney unless the PSB 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

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 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.

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 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 PSB to publish guidelines setting out the criteria for deciding whether or not areas of study meet the knowledge requirements. The PSB has established a curriculum of studies that will satisfy the minimum knowledge requirements 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.

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 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 PSB 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

Part 3: Professional Conduct

Part 4: Intellectual Property Law

Part 5: Intellectual Property Systems

The overall objective of a course of study 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 PSB 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 PSB in relation to that topic group.

Accredited studies remain valid for 10 years after completion.

Exemptions for non-accredited courses of study

The PSB may exempt an applicant from having to satisfy all or some of the requirements of a topic group as outlined in Annexure A 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 PSB 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’.

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.

In considering whether a course completed over seven years ago remains current, the PSB takes care to ensure that the studies are relevant to current practice. For example, the PSB 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 PSB may stipulate in writing. After that date, if the applicant has not been registered as a patent attorney the PSB 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 PSB.

In assessing an exemption application, the PSB seeks extensive information about the course. This normally includes:

  • evidence that the applicant has successfully completed the subject. This is normally the academic transcript (the original or a certified copy)
  • a mapping of the topic requirements (see Annex B) against the course undertaken, together with evidence of the inclusion of the particular component
  • the approved 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
  • duration and workload
  • methods of assessment (in looking at the methods of assessment the PSB needs to be satisfied that the applicant has been assessed on a PSB selection of the course)

Applicants often fail to provide sufficient evidence to satisfy the PSB that a particular course has met the requirements. The inclusion of a relevant item in a course outline will not suffice.

The PSB 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 PSB to declare 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 5.7.

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 PSB 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 Australian content.

Other topic groups such as drafting patent specifications are not so jurisdictionally distinct and the PSB may look more favourably on practical subjects for exemption.

Generally speaking exemptions are granted on a case-by-case basis with the crucial issue being that of content.

Status of exemptions granted by universities

Universities and other accredited providers customarily 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 PSB recognises the right of a university to grant exemptions for its own academic purposes. However, the PSB does not recognise these exemptions.

The PSB 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 PSB 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 PSB for an exemption, and it would be unlikely that the PSB would be satisfied that those prior studies would justify an exemption for Patent Law - Topic Group E as it may not cover Australian 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 may 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:

  1. 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.
  2. 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 seven year period or longer as allowed by the PSB.
  3. Some combination of 1 or 2.
  4. Passing the PSB examinations in relation to any of the nine topic groups if available. Whilst the Regulations do provide for PSB examinations, the PSB does not currently provide examinations and it is unlikely to do so.

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 PSB may extend either period in individual cases.

How to apply for an exemption

The following information is relevant for applicants who choose to seek exemptions by addressing the topic groups in the curriculum approved by the PSB.

Applications for exemption should be made on the approved form. The form comes in two parts.

Part 1 is the cover form. Part 2 relates to the particular topic group in which the exemption is sought.

Examples of the completed forms are here:

https://www.psb.gov.au/modules/file/icons/application-pdf.pngSample Application for Exemption from a Topic Group Part 1

https://www.psb.gov.au/modules/file/icons/application-pdf.pngSample Application for Exemption from a Topic Group Part 2

Applicants making applications are required to complete both parts of the application and also provide:

  • a certified copy of the academic record or similar record indicating successful completion of the course(s) of study on which the application for exemption is based
  • syllabus details showing detailed information of the course(s) from handbook subject descriptions or course outlines
  • information on the assessment regime for each course and evidence that the assessment covered relevant topic areas.

How to apply for approval of knowledge requirements

Before an applicant can be registered as a patent attorney, the PSB must be satisfied that the applicant has the knowledge of intellectual property law and practice required to practice as a patent attorney.

Once an applicant has satisfied the relevant requirements, either through passing an accredited course or gaining an exemption from the PSB for each topic group, the applicant must apply to the PSB for their approval.

As PSB meetings are usually only held three times a year, the PSB has enabled the Board Secretary to approve knowledge requirements in most cases. Applicants should check with the PSB Secretariat.

An application must be on the application form, https://www.psb.gov.au/modules/file/icons/application-pdf.pngApplication for Knowledge Requirements for Patent Attorneys and be accompanied by:

  • evidence that you have the relevant knowledge
  • the original or a certified copy of any academic record that shows the study that contributes to the knowledge.

The PSB will notify you within 42 days of its decision of whether or not it is satisfied that you have met the requirements.