Guidelines on knowledge requirements for trade marks attorneys

Guidelines on knowledge requirements for trade marks attorneys

 

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

An applicant cannot be registered as a trade marks attorney unless the PSB is satisfied that an applicant has the ‘knowledge of intellectual property law and practice that is required for a person to practise as a trade marks attorney’.

Knowledge Requirements

The knowledge requirements as set out in the Trade Marks Regulations 1995 (the Regulations) are:

Part 1: Overall requirement

A course of study must provide for a student to have an appropriate level of:

  1. knowledge and practical application so that the student can give advice about applicable categories of protection for particular activities
  2. appreciation of the advantages of each form of protection for a client
  3. understanding of how to get and maintain appropriate protection for a client
  4. 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:

  1. the Australian legal system
  2. 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 or trade marks 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, both in Australia and other countries.

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 of the Patents Regulations 1991 (as amended for trade marks attorneys).

The curriculum consists of four 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 is identical to the first four topic groups that will satisfy the knowledge requirements for registration as a patent attorney (topic groups A - D).

Each topic group is equivalent in workload to a normal unit of study in a semester at a higher education institution (approximately 25 per cent 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 rather than the formal contact hours.

The four topic groups

The PSB curriculum consists of four topic groups. It addresses the knowledge requirements in Schedule 5, as amended for registration as a trade marks attorney, 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 a candidate to have an appropriate level of:

  1. Knowledge and practical application so the candidate can give advice about applicable categories of protection for particular activities, and an appreciation of the advantages of each form of protection for a client
  2. Understanding of how to get and maintain appropriate protection for a client
  3. 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
  • gaining an exemption in relation to one or more courses of study (topic groups)
  • satisfying the PSB that the applicant has the required knowledge by a means other than completing a course of study. The PSB will consider this criterion on a case by case basis following receipt of a request made under regulation 20.8(4) of the Trade Marks Regulations 1995.

Further information about the first two 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 on-accredited courses of study

The PSB may exempt an applicant from having to satisfy some or all of the requirements of a topic group 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 candidate completed it). Practical experience alone is not sufficient for an exemption to be granted.

Before granting an exemption, the PSB must be satisfied that the candidate 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 candidate has not been registered as a trade marks attorney, the PSB may decide that the course is outdated and must be repeated.

Information required by PSB for the granting of an exemption from a topic group

Exemptions may be sought from any of the four 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 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 required details
  • whether the course is based on 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, candidates are urged wherever possible to provide detailed course outlines for the year in which the course was taken by the candidate.

Where such outlines are unavailable, candidates may need to obtain a letter or statement from someone involved in teaching the course that can provide the necessary information.

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 Trade Marks Law, require Australian content. 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 Trade Mark Law on the basis that the candidate 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 the PSB would be satisfied that those prior studies would justify an exemption for Trade Mark Law - Topic Group C. - as it may not cover Australian trade mark law or be studied to a sufficient depth.

Knowledge acquired through experience

The Regulations exclude knowledge gained by experience from being taken into account when deciding whether an exemption from a study requirement may be granted.

However, in order to become a registered trade marks attorney, the Regulations specify that the PSB needs to be satisfied that the applicant has the knowledge of intellectual property law and practice that is required for a person to practise as a trade marks attorney. The PSB will determine how it is satisfied for this requirement based on the particular evidence presented to it by the applicant.

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 of the four 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 a previous seven year period or such longer period as allowed by PSB.
  3. Some combination of 1 or 2.
  4. Passing the PSB examinations in relation to any of the four topic groups if available. Whilst the Regulations provide for the PSB to conduct examinations, the PSB has not conducted examinations since 2004 and it is unlikely that the PSB will do so in the future.
  5. Satisfying the PSB by a means other than 1, 2, 3, or 4.

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. 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. Applicants are encouraged to focus on the salient points and file the minimum documentation necessary to establish their case for each exemption application.

Applications for exemption should be made on the approved form. It should be noted that the form comes in two parts.

Part 1 is the cover form:

https://www.psb.gov.au/modules/file/icons/application-pdf.pngApplication for exemption from a topic group

Part 2 relates to the particular topic group in which the exemption is sought. Individual application forms for each topic group are available.

An example of the completed forms is 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

Candidates 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 trade marks attorney, the PSB must be satisfied that the applicant has the knowledge of intellectual property law and practice required to practice as a trade marks 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 held three times a year, the PSB has enabled the Secretary to approve knowledge requirements in cases where applicants have passed accredited courses or gained PSB exemptions.

An application must be on the application form https://www.psb.gov.au/modules/file/icons/application-pdf.pngRegulation 20.7 Application for trade marks knowledge requirements 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.