Before applying to the Designated Manager to become a registered trade marks attorney, make sure you seek approval from the Board to confirm you meet the eligibility criteria.
Academic qualifications
When applying for registration, you will need to provide the Designated Manager with evidence from the Board that you have met the qualification requirements.
When applying to the Board for approval of your qualifications, the Board will require a qualification at the diploma level or higher. The level of your qualifications is assessed against the Australian Qualifications Framework (AQF).
Your qualification does not have to relate to intellectual property or be in a specific field.
The Secretary to the Board has delegation to approve your application for approval of Trade Marks qualifications
Knowledge requirements
When applying for registration, you will need to provide the Designated Manager with evidence from the Board that you have the knowledge of IP Law and Practice.
When applying to the Board to have your knowledge requirements approved, the Board will need to assess your knowledge by way of completed course/s of study detailing the knowledge of Australian intellectual property law and practice that is required to practise as a trade marks attorney.
Courses need to include an appropriate level of:
- Knowledge required to give advice about protection of intellectual property.
- 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.
You can meet the knowledge requirements by:
- Satisfactorily completing Board accredited courses of study.
- Applying and gaining approval for exemption/s from the Board for course/s of study you have completed outside the non-accredited courses that have been approved by the Board.
How to apply for approval of knowledge requirements:
- Accredited courses - Submit the approval of knowledge requirements application form to the Board along with academic transcript/s from accredited courses of study. Noting that you have 10 years from the first course completed to apply to the Designated Manager for registration.
- Non-accredited courses - Before submitting your application for approval of knowledge requirements to the Board, you will need to submit any applications for exemptions for any non-accredited courses of study you have completed for the Board to consider. This involves:
- completing the exemption form/s
- providing the academic transcript/s and course outlines about non-accredited courses of study you have completed that cover the required content listed within the exemption forms. Any exemptions granted by the Board have a validity of 5 years, in which you need to apply to the Designated Manager to seek registration as a Trade Marks Attorney.
The Secretary to the Board has delegation to approve your application for approval of Trade Marks knowledge requirements.
The Board has established a curriculum of studies that meets the minimum knowledge requirements of the Trade Marks Regulations 1995.
The curriculum consists of 4 topic groups, which together cover the required content to prepare students to practise as an Australian trade marks attorneys.
The groups are:
- A1 - Legal Process and A2 - Overview of Intellectual Property
Australian legal system and how intellectual property rights may be protected.
- B - Professional Conduct
Rights, privileges and responsibilities of a trade marks attorney.
- C – Trade Marks Law
Principles of trade marks and the trade marks system in Australia and New Zealand
- D – Trade Marks Practice
Prosecution and maintenance of trade marks application in Australia and in other countries.
You can apply to the Board for an exemption if you have completed a non-accredited course of study within the last 7-10 years.
To approve an exemption, the Board must be satisfied that:
- You've passed the course of study
- The course has outcomes that are the same as, or similar to, those of a knowledge requirement for which the exemption is sought
To check whether your course of study has similar outcomes to the knowledge requirements referred to in Schedule 5 of the Patent Regulations 1991, the Board has published guidelines that detail the type of content required to have been completed with a topic group to be granted an exemption - curriculum of studies.
Please note that exemptions must be based on a course of study. The Board can't take work experience into consideration for an exemption application as per Schedule 5 of the Patent Regulations 1991.
If your application is approved, your exemption will be valid for 5 years. You will need to apply for registration with the Designated Manager prior to this exemption expiring.
Minor shortcomings
The Board will consider an exemption even if the course of study has not covered all the material listed in the curriculum of studies. However, the Board will not consider an application if there are significant gaps, or where an important topic has not been covered, as highlighted in the curriculum of studies guidelines.
An exemption can also be based on multiple courses of study if together they would cover the relevant material.
Older courses - Regulation 20.9(3)
The Board will normally only approve courses of study completed within the last 7 years. The Board can't grant exemptions for courses older than 10 years.
Courses between 7-10 years old can be considered on a case-by-case basis. The Board will not grant an exemption if the course content is no longer current. This would include where the law or relevant practices have changed significantly. This is less likely for topic groups where the content does not change much over time, such as knowledge of legal processes.
International courses
Exemptions may be granted based on courses of study completed in countries other than Australia. This is most likely for topic groups A1-Legal Process, A2-Overview of IP and B-Professional Conduct if the law and the legal institutions studied are similar to Australia.
C-Trade Marks Law and D-Trade Marks Practice require substantial Australian content. It is unlikely that exemptions would be approved for these topic groups based on international courses.
How to apply
To apply to the Board for an exemption, you'll need to download and complete the relevant form. Remembering that only courses of study completed within the past 10 years can be considered by the Board
Personal requirements
To become a registered trade marks attorney, you must:
- Be of good fame, integrity and character
- Not have been convicted of a prescribed offence during the past 5 years
- Not be under a sentence of imprisonment for a prescribed offence
To demonstrate that you fulfil these requirements, you will need to provide:
- A declaration regarding the offences
- A declaration by another person regarding your good fame, integrity and character
These requirements, including the prescribed offences, are described in regulation 20.3 of the Trade Marks Regulations.
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