Becoming a registered patent attorney in Australia

Registration as an Australian patent attorney requires a combination of technical qualifications, legal qualifications and documented relevant experience. These requirements are checked, and the registration process is overseen, by the Trans-Tasman IP Attorneys Board (TTIPAB). Once a suitable technical qualification (e.g. BEng or BSc) has been obtained, completion of the legal qualifications and gaining the relevant experience typically takes three to four years.

The technical qualifications must:

  • relate to a field of science or technology that contains potentially patentable subject matter; and
  • involve a depth of study that the Patent Standards Board considers is sufficient to provide an appropriate foundation for practice as a patent attorney.

Typically this requires a tertiary engineering and/or science qualification from a recognised university.

The legal qualifications include the successful completion of nine topic groups:

  • Legal Process and Overview of Intellectual Property
  • Professional Conduct
  • Trade Mark Law
  • Trade Mark Practice
  • Patent Law
  • Patent System
  • Drafting Patent Specifications
  • Interpretation and Validity of Patent Specifications
  • Designs Law.

The topic groups are covered by certain accredited courses. Some providers allow several of these topics to be completed as part of a Masters of Intellectual Property Law.

One or more ‘statements of skill’ must be filed to satisfy the PSB that the relevant experience has been obtained. The relevant experience is defined by subregulation 20.10(1) of the Patent Regulations 1991 which provides:

‘The applicant:

  • must have been employed in a position, or positions, that provided the applicant experience in the following skills:
    • searching patent records;
    • preparing, filing and prosecuting patent applications in Australia;
    • preparing, filing and prosecuting patent applications in other countries and organisations, particularly countries and organisations that are regarded as major trading partners with Australia;
    • drafting patent specifications;
    • providing advice on the interpretation, validity and infringement of patents; and
  • must have been employed in a position, or positions, of that kind for at least:
    • 2 continuous years; or
    • a total of 2 years within 5 continuous years.’

Typically each statement of skill must be signed by an registered patent attorney having at least five years’ post-registration experience.