Applying for registration as a trans-Tasman patent attorney
Any individual or incorporated patent attorney firm wishing to practice as a patent attorney in New Zealand or Australia must be registered under the joint trans-Tasman registration regime.
The key features of the joint registration regime are set out in the Arrangement Between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys [96 KB PDF]. The joint registration regime is implemented through the following legislation:
The trans-Tasman patent attorney register is administered by the Designated Manager.
The Designated Manager is responsible for registering patent attorneys under the joint regime. The Designated Manager may also suspend or cancel a person’s registration under certain circumstances, such as where:
- the registered patent attorney has failed to meet continuing professional education requirements (minimum of 10 hours per annum);
- the registered patent attorney has failed to renew his or her registration in a timely manner; or
- the Trans-Tasman IP Attorneys Disciplinary Tribunal has ordered that the registration of a patent attorney be suspended or cancelled following a determination of misconduct or unsatisfactory conduct.
Trans-Tasman IP Attorneys Board
The Trans-Tasman IP Attorneys Board (the Board) is an Australian statutory body responsible under the joint registration for, amongst other things:
- approving the academic qualifications required to become a patent attorney;
- the knowledge requirements for patent attorneys;
- the accreditation of courses for patent attorneys that satisfy knowledge requirements to become registered;
- the granting of exemptions from knowledge requirements;
- the professional conduct of patent attorneys;
- disciplinary matters including:
- receiving and investigating complaints about patent attorneys;
- inquiring into the conduct of patent attorneys; and
- commencing disciplinary proceedings against patent attorneys before the Trans-Tasman IP Attorneys Disciplinary Tribunal.
The Board consists of 7 to 10 members (including 2 ex officio members). All members, except the ex officio members, are appointed by the Australian Minister for Industry, Innovation and Science. The Board is made up of:
- a Chair;
- the Director General of IP Australia;
- the New Zealand Commissioner of Patents;
- at least two New Zealand patent attorney members; and
- at least two other members who are usually Australian trade marks and patent attorney members.
The Board is required to report annually to the Australian Minister and the New Zealand Minister of Commerce and Consumer Affairs.
Criteria for registration
The criteria for registration as a patent attorney are set out under Part 2, Chapter 20 of the Australian Patents Regulations 1991.
To register, an individual must apply to the Designated Manager and provide the following:
- Evidence from the Board that they have an academic qualification in a patentable subject matter;
- Evidence from the Board that they have the required knowledge of intellectual property law and practice (which normally comprises completing courses of study accredited by the Trans-Tasman IP Attorneys Board);
- One or more statements of skill from a New Zealand or Australian resident patent attorney that the applicant has relevant patents-related work experience, including:
- Having been employed for at least two years in a patent attorney firm or company; and
- Experience in the following skills:
- searching patent records;
- preparing, filing and prosecuting patent applications in New Zealand, Australia and other specified countries;
- drafting patent specifications; and
- giving advice on the interpretation, validity and infringement of patents.
- A declaration that the applicant has not committed an offence in the last five years or is subject to a sentence of imprisonment;
- A declaration (by another person) of the applicant’s good fame, integrity and character;
- Payment of the prescribed registration fee.
Incorporated patent attorney firms
Incorporated patent attorney firms may also be registered and may provide advice about patents.
To register, an incorporated firm must apply to the Designated Manager and provide the following:
- The name of each patent attorney director of the company;
- Evidence the company is registered in Australia or New Zealand;
- Evidence that the company has adequate and appropriate professional indemnity insurance;
- The prescribed registration fee.
All incorporated patent attorney firms must have at least one director who is a patent attorney.
Patent attorney partnerships
It is an offence for any partnership that does not have at least one patent attorney partner to describe or hold the partnership out as providing patents advice, or to provide patents advice. Note, however, that patent attorney partnerships do not need to be registered.
Limited partnerships may not describe or hold themselves as patent attorneys or patent agents, nor can they assist or provide advice on patents.
How to apply
Applications for registration as a trans-Tasman patent attorney must be made to the Designated Manager, using the approved form together with payment of the prescribed registration fee.
Detailed information on how to apply for registration is available on the Trans-Tasman IP Attorneys Board’s website.
Completing accredited courses of study
A comprehensive list of all knowledge requirements, and accredited courses of study available in New Zealand and Australia, can be found on the Trans-Tasman IP Attorneys Board’s website.
Victoria University in Wellington currently offers two accredited courses for meeting some of the aspects of the knowledge requirements. Victoria University is expected to seek accreditation for further courses covering additional topics in due course.
New Zealand applicants may undertake Australian accredited courses of study to qualify for registration. Some institutions provide their courses through remote learning. Note that New Zealanders taking Australian courses need only pay the Australian domestic course fees.
Renewal of trans-Tasman Patent Attorney registration
Patent attorneys must renew their registration annually. The registration year runs from 1 July to 30 June.
The Trans-Tasman IP Attorneys Board emails all currently registered attorneys a renewal reminder notice in late May. If you are a registered attorney and have not received your renewal notice by 1 June, please contact the Trans-Tasman IP Attorneys Board.
In addition to paying the registration renewal fee, all patent attorneys must provide evidence that they have completed at least 10 hours of appropriate continuing professional education over the previous 12 months. Failure to complete the required hours of continuing professional education may result in registration being suspended by the Designated Manager.
Your renewal fees must be paid by 31 July, or otherwise the Designated Manager will remove your name from the register.
If you are removed from the register for non-payment of the renewal fee, on or before 1 September, you may apply to the Designated Manager for the restoration of your name. However, any application for restoration (following removal for non-payment) made after 1 September will need to meet more stringent restoration requirements.
Patent attorneys can voluntarily request the Designated Manager to remove their name from the register. If your name is voluntarily removed, then you must apply for restoration within three years from the date that your name was removed. If you miss this 3-year date, then you will need to meet more stringent restoration requirements.
An administration fee, in addition to the annual renewal fee, is payable for all applications for restoration to the register.
Trans-Tasman IP Attorneys Disciplinary Tribunal
The Trans-Tasman IP Attorneys Disciplinary Tribunal (the Tribunal) is an Australian statutory body responsible for:
- Conducting hearings in relation to the conduct of patent attorneys;
- Determining whether a registered patent attorney is guilty of professional misconduct or unsatisfactory professional conduct; and
- Determining the appropriate sanction for a patent attorney who has been found guilty of misconduct or unsatisfactory professional conduct.
The Tribunal is a three-person panel comprising an experienced legal practitioner, and two experienced registered (or formerly registered) patent attorneys appointed by the responsible Australian Minister. Where the Tribunal is conducting a hearing in relation to the conduct of a New Zealand patent attorney, the panel must include at least one experienced patent attorney from New Zealand.
Although the Tribunal is an Australian statutory body, it has been deemed to be an Australian court under section 152 of the Evidence Act 2006 and is therefore able to have jurisdiction over New Zealand residents. The Tribunal may, for example, serve subpoenas in New Zealand, sit in New Zealand and take evidence and receive submissions by telephone or video conference from New Zealand when sitting in Australia.
The Tribunal has also been declared to be a tribunal to which the Trans-Tasman Proceedings Act 2010 applies. This means that any directions or orders of the Tribunal may be recognised and enforced in New Zealand.
Where a New Zealand patent attorney is subject to a disciplinary hearing, their legal representative and any witnesses from New Zealand are able to appear remotely from New Zealand at a sitting of the Tribunal.
The Tribunal may also sit in New Zealand, and when it does so it has the same powers and protections as it would if it was sitting in Australia.
When sitting in New Zealand the Tribunal may:
- Direct that the hearing or any part of the hearing be held in private;
- Require a person to leave the Tribunal;
- Prohibit or restrict publication of evidence or names of any party or any witness;
- Administer oaths in New Zealand.
Failure to comply with a direction or order of the Tribunal may be enforced by a Judge of the High Court of New Zealand in the same manner as if the direction or order of the Tribunal had been made by a Judge of the High Court. This includes the power to punish for contempt for not complying with a direction or order of the Tribunal.
Failure of a witness to comply with a subpoena from the Tribunal can result in the High Court issuing a warrant to arrest the witness and bring them before the court. The High Court may order the witness to pay a fine not exceeding $1,000 for failure to comply with the subpoena.
Members of the Tribunal, witnesses and legal representatives have the same privileges and immunities given to Judges, counsel and witnesses under sections 56Q(1), 2(a), (3)(a) and (4)(a) of the Judicature Act 1908.
Reviewing decisions under the joint regime
Decisions of the Designated Manager, Board and Tribunal may be reviewed by the Australian Administrative Appeals Tribunal, upon request.
Furthermore, someone aggrieved may also seek judicial review of the decision in accordance with the Australian Administrative Decisions (Judicial Review) Act 1977. Applications for judicial review need to be made to either the Australian Federal Court or the Federal Circuit Court.
Australian Administrative Appeals Tribunal
The Administrative Appeals Tribunal (AAT) conducts independent merits review of administrative decisions made under Australian Commonwealth laws. In accordance with paragraphs 22.26 (2)(b), (c) and (d) of the Australian Patents Regulations 1991 (Cth), most decisions of the Designated Manager, the Board and the Tribunal may be reviewed on request by the AAT.
The AAT reviews a decision “on the merits”. This means that it will take a fresh look at the facts, law and policy relating to the decision and arrive at its own decision. The AAT has the power to:
- affirm a decision
- vary a decision
- set aside a decision and substitute a new decision, or
- remit a decision to the decision-maker for reconsideration.
Parties to AAT review may appeal a decision of the AAT to Federal Court or the Federal Circuit Court on points of law. Unlike the Tribunal, the AAT does not have the power to sit in New Zealand. However, New Zealanders may participate in AAT sittings in Australia by teleconference or video conference.
Offences under the joint regime
There are a range of offences related to persons and companies who are not registered under the joint regime for carrying on business, practising, acting or holding themselves or their company out as a patent attorney or patent agent for obtaining patents.
Offences also apply to partners of partnerships and limited partnerships carrying on business, practising or acting as a patent attorneys or patent agent, or describing or holding the partnership out as a patent attorney or patent agent for obtaining patents.
Where an incorporated patent attorney firm is registered under the joint regime, it is an offence for the incorporated patent attorney firm to not have a patent attorney director.
Anyone convicted of committing any of these offences may be subject to a fine up to $30,000.
Documents prepared by lawyers
It is an offence for a lawyer to prepare a patent specification or a document related to the amendment of a patent specification, or permit another person to represent that the lawyer is entitled to do so, unless the lawyer is:
- also a registered patent attorney;
- acting under instruction of a registered patent attorney; or
- directed to do so by a court.
The penalty for being convicted of any of the above is a fine up to $6,000.
Documents prepared by incorporated patent attorney firms and incorporated law firms
Neither an incorporated patent attorney firm or an incorporated law firm may permit an employee, who is not a registered patent attorney, to prepare a patent specification or document related to the amendment of a patent specification unless:
- the employee does so under the instruction or supervision of a registered patent attorney; or
- the firm is directed to do so by a court.
The maximum penalty for being convicted of doing so is a fine of $30,000.
Documents prepared by a member of a partnership or limited partnership
A partner in a partnership, who is not a registered patent attorney, must not prepare a patent specification or document related to the amendment of a patent specification unless:
- the partner does so under the instruction or supervision of a registered patent attorney; or
- the partner is directed to do so by a court.
The maximum penalty for doing so is a fine of $6,000.
Transitional provisions for persons who have already passed a New Zealand patent attorney exam paper
Anyone who had passed at least one New Zealand patent attorney exam under the New Zealand Patent Regulations when the joint registration regime commenced on 24 February 2017 may continue sitting the New Zealand patent attorney exams for a further four years (i.e. until 2020) under the transitional provisions in the New Zealand Patents Act 2013.
Anyone applying for registration under the transitional provisions is also exempt from meeting the academic qualification requirement for registration. If all New Zealand patent attorney exam papers are passed within the four-year period, they will be deemed to satisfy the knowledge requirements under the new joint registration regime.
Candidates that have passed all the New Zealand patent attorney exam papers must apply to be registered under the joint registration regime within six months of completing the exams.
Note that anyone relying on the transitional provisions to register under the joint registration regime is still required to provide:
- One or more statements of skill regarding the applicant’s patents-related work experience;
- A declaration that the applicant has not committed an offence in the last 5 years or is subject to a sentence of imprisonment;
- A declaration (by another person) of the applicant’s good fame, integrity and character; and
- Payment of the prescribed registration fee.
For the avoidance of doubt, any person who has not passed at least one exam paper prior to commencement of the joint regime on 24 February 2017 will not be permitted to sit New Zealand patent attorney exams during the four-year transition period.
Anyone who fails to complete all the patent attorney exam papers within the four-year transition period may apply to the Board to cross-credit any passed exam papers for the purpose of meeting one or more of the prescribed knowledge requirements for qualifying for registration under the joint registration regime. Note that the Board is under no obligation to cross-credit any passes.
2017 New Zealand Patent Attorney Examinations (under transitional provisions)
Examinations for all New Zealand exam papers under regulation 158 (1) will be held in June/July 2017 for those candidates wishing to rely on the transitional provisions of the joint patent attorney regime.
Further information about the June/July exams will be posted on the IPONZ website closer to the time.
New Zealand patent attorney exam papers
The New Zealand patent attorney exams are conducted by the Examination Board, which comprises representatives of the Commissioner of Patents and the New Zealand Institute of Patent Attorneys. The exams consist of the following papers:
a. The New Zealand Law and practice relating to patents and designs - two papers A1 and A2 with a fee payable for each paper.
b. The New Zealand Law and Practice relating to trade marks.
c. Foreign Patent Law.
d. The preparation of specifications for NZ patents (also known as “Drafting”).
e. Patent attorney practice in New Zealand, including the interpretation and criticism of patent specifications (also known as “Criticism”) Regulation 155-160.
Please note that:
- Candidates cannot sit more than three subjects in any one year.
- Papers A1 and A2 are co-requisites and must be sat together.
- A pass in subject A is recorded when the average of the A1 and A2 exam results is not less than 50%.
- Candidates cannot sit subjects D or E until they have gained a pass in subject A.
- A candidate who only gains a single credit in any one year must complete all of the subjects of the examination within five years or the credit for that subject will lapse.
- There is provision for seeking an extension of time regarding the credit of a single paper (refer Regulation 159 (3)).
- Candidates must sit the examination at one of the specified locations. Candidates cannot sit papers outside of New Zealand.
Refer Patent Regulations 1954 Regulations 155-160 for more information.
Checklist for submitting an application to sit further exams
Your application to sit any remaining New Zealand Patent Attorney exams should include:
- A letter listing the subjects you want to enrol for, and your contact details.
- Provide billing details by completing the New Zealand Patent Attorney Examination form [334 KB PDF].
Please send your application to IPONZ.
Contact details for the Examination Board: