Patents and Trade Marks Legislation Amendment Regulations 2008 (No. 1)1
Select Legislative Instrument 2008 No. 122
I, PHILIP MICHAEL JEFFERY, Governor-General of the Commonwealth of Australia, acting with the advice o f the Federal Executive Council, m ake the following Regulations under the Patents Act 1990 and the Trade Marks Act 1995.
Dated 19 June 2008
P. M. JEFFERY Governor-General
By His Excellency’s Command
KIM CARR Minister for Innovation, Industry, Science and Research
0711491A-080605EV.doc Federal Register of Legislative Instruments F2008L02119
Contents
Page
Contents
1 Name of Regulations 2 2 Commencement 2 3 Amendment of Patents Regulations 1991 2 4 Amendment of Trade Marks Regulations 1995 2 5 Transitional 2
Schedule 1 Amendments of Patents Regulations 1991 4
Schedule 2 Amendments of Trade Marks Regulations 1995 42
1 Name of Regulations These Regulations are the Patents and Trade Marks Legislation Amendment Regulations 2008 (No. 1).
2 Commencement These Regulations commence on 1 July 2008.
3 Amendment of Patents Regulations 1991 Schedule 1 amends the Patents Regulations 1991.
4 Amendment of Trade Marks Regulations 1995 Schedule 2 amends the Trade Marks Regulations 1995.
5 Transitional (1) The amendments made by Schedules 1 and 2 apply to:
(a) an application for registra tion received on or after 1 July 2008; and
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Regulation 5
(b) a disciplinary proceeding commenced on or after 1 July 2008.
(2) For paragraph (1) (b), disciplinary proceedings are tak en to have commenced on or before 30 June 2008 if, on or before that date, the Board has give n written author ity to a complainant to bring proceedings against a reg istered patent attorney.
(3) If, on or before 30 June 2008: (a) a person has been granted an exem ption from a
requirement in Schedule 5 to the Patents Regulations 1991; or
(b) the Board has decided that it is satisfied that a person has an academic qualification; or
(c) the Board has accredited a course of study; the exemption, decision or accre ditation applies to that person or course, as if it had been exem pted, decided or accredited under the relevant provision of the Patents Regulations 1991, as amended by these Regulations.
(4) If, in the period starting on 1 July 2008 and ending at the end of 30 June 2009: (a) a person would have satisfied the employm ent
requirements set out in regulation 20.3 of the Patents Regulations 1991 immediately before the commencement of Schedule 1; and
(b) the person applies for registration as a patent attorney; the person is taken to meet the employment requirements.
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Schedule 1 Amendments of Patents Regulations 1991
Schedule 1 Amendments of Patents Regulations 1991 (regulations 3 and 5)
[1] Subregulation 1.3 (1), definition of former attorneys Regulations substitute former attorneys Regulations means the follow ing Regulations: (a) the Patent Attorneys Regul ations as in force immediately
before the commencing day under the 1952 Act; (b) the Patents Regulations 1991 as in force imm ediately
before 1 July 2008.
[2] Chapter 20 substitute
Chapter 20 Patent attorneys
Part 1 Introduction
20.1 Interpretation (1) In this Chapter:
AQF means the Australian Qualifications Framework. Board means the Professional Standards Board for Patent and Trade Marks Attorneys. candidate means a person who proposes or proposed to sit, or has sat, for an examination. Chairperson means Chairperson of the Board.
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Disciplinary Tribunal means the Patent and Trade Marks Attorneys Disciplinary Tri bunal established by regulation 20.61. professional misconduct has the m eaning given by regulation 20.32. Register or Register of Patent Attorneys means the register kept under section 198 of the Act. statement of skill has the meaning given by regulation 20.11. unqualified, in relation to a particular time, means: (a) not holding one or m ore of the academic qualifications or
knowledge requirements required for registration at that time by these Regulations; or
(b) not holding a qualification re quired for registration at that time by the former attorneys Regulations.
unsatisfactory professional conduct has the meaning given by regulation 20.32.
(2) For regulation 20.6, the higher education sector comprises: (a) universities; and (b) higher education institutions other than universities; and (c) higher education providers.
Part 2 Obtaining registration for first time
20.2 Form of application An application for registration as a patent attorney must: (a) be in writing, in a fo rm approved by the Designated
Manager; and (b) be accompanied by evidence and m aterial mentioned in
regulation 20.3; and (c) be accompanied by the fee m entioned in item 104 of
Schedule 7.
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Schedule 1 Amendments of Patents Regulations 1991
20.3 Evidence that applicant meets registration requirements
(1) An application for registration as a patent attorney m ust be accompanied by the following: (a) evidence that the app licant is ordinarily resident in
Australia; (b) evidence that the Board is satisfied that the app licant has,
or is entitled to the award of, an academic qualification of a kind mentioned in regulation 20.6;
(c) evidence that the Board is satisfied that the app licant has the knowledge of intellectual property law and practice that is req uired for a person to practice as a pa tent attorney;
(d) one or m ore statements of skill, f or the pur poses of regulation 20.11;
(e) a statutory declaration, by the applicant, that he or she: (i) has not, in the 5 years preceding the application,
committed an of fence prescribed by subregulation 20.12 (1); and
(ii) is not under sentence of imprisonment for an offence prescribed by subregulation 20.12 (2);
(f) a statutory declaration, by another person, that the applicant is of good fame, integrity and character.
(2) A statutory declaration under paragraph (1) (f) must contain details of the basis of the opini on that the applicant is of good fame, integrity and character.
20.4 Certificate of registration If the Designated Manager registers a person as a patent attorney, the Designated Manage r must give the person a certificate of registration.
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20.5 Evidence of academic qualifications (1) The Board must be satisfie d that a person has a qualification
mentioned in regulation 20.6 if: (a) the person makes an application in the form approved by
the Board; and (b) the application is accompanied by:
(i) evidence that the person has the qualification; and (ii) the original or a certified copy of an academic record
that shows the units that make up the qualification.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the person has the qualification, notify the person, in writing, of its decision. Note A decision that a person does not have a qualification is reviewable under regulation 22.26.
20.6 Academic qualifications (1) The Designated Manager m ust not approve an applicant for
registration as a patent attorney unless the applicant has, or is entitled to: (a) an AQF qualification from the higher education sector that
the Board is satisfied is an appropriate qualification for a patent attorney; or
(b) a qualification awarded by an overseas institution that the Board is satisf ied is eq uivalent to an AQF qualif ication from the higher education sector.
(2) The Board must not be satisfied that a person has an AQF qualification unless the qualification, or a cou rse taken for the purpose of the qualification: (a) is in a field of scien ce or technology that contains
potentially patentable subject matter; and (b) involves a depth of study that the Board considers is
sufficient to provide an appropriate foundation for practice as a patent attorney.
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(3) The Board must not be sati sfied that a qualification from a foreign institution is equivalent to an AQF qualification unless the qualification, or a course taken for the purpose of the qualification: (a) is in a field of scien ce or technology that contains
potentially patentable subject matter; and (b) involves a depth of study that the Board considers is
sufficient to provide an appropriate foundation for practice as a patent attorney.
20.7 Evidence of knowledge requirements (1) The Board must be satisfied that a person has a knowledge
requirement mentioned in regulation 20.8 if: (a) the person makes an application in the form approved by
the Board; and (b) the application is accompanied by:
(i) evidence that th e applicant has the relevant knowledge; and
(ii) the original or a certif ied copy of any academ ic record that shows the study that contributes to the knowledge.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the person has the knowledge requirement, notify the person, in writing, of its decision. Note A decision that a person does not have a knowledge requirement is reviewable under regulation 22.26.
20.8 Knowledge requirements (1) The Designated Manager m ust not approve an applicant for
registration as a patent attorney unless the Board is satisfied that the applicant has the know ledge of intellectual property law and practice that is required for a person to practice as a patent attorney.
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(2) Subject to subregulations (3), (4) and (5), the Board m ust, in satisfying itself whether or not an applicant has the knowledge of intellectual property law and pr actice that is required for a person to practice as a patent attorn ey, take into acco unt whether the applicant has the knowledge requirements that meet the minimum requirements set out in Schedule 5.
(3) The Board m ay publish guide lines setting out criteria for deciding whether or not areas of study are likely: (a) to meet the minimum requirements set out in Schedule 5; (b) to provide a person w ith the appropriate level of
understanding to practice as a patent attorney.
(4) The Board m ay be satisfied th at an applicant has the knowledge of intellectual propert y law and practice that is required for a person to practice as a patent attorney, despite the fact that the applicant does not meet every requirement set out in Schedule 5.
(5) The Board is not able to be satisfied that the applicant has the knowledge of intellectual propert y law and practice that is required for a person to practice as a patent atto rney if the knowledge requirements on which the applicant relies were obtained more than 10 years prior to the application.
(6) If an applicant has been granted an exemption under regulation 20.9, the applicant is taken to meet the requirem ent in Schedule 5 for which the exemption is granted. Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a p atent attorney a person who satisfies certain conditions. Paragraph 198 (4) (b) requires that a person hold such qualifications as are specified in, or ascertained in accordance with, the Regulations.
20.9 Exemption from a requirement in Schedule 5 (1) The Board may exempt an applicant from having to satisfy all
or some of the requirements mentioned in Schedule 5.
(2) The Board must not give an exemption to an applicant unless: (a) the applicant makes an a pplication in the form approved
by the Board; and
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(b) the applicant gives the Board enough information for the Board to be satisfied under paragraph (c); and
(c) the Board is satisfied that: (i) the applicant has passed a course of study at a
satisfactory level; and (ii) the course of study ha s outcomes that are the same
as, or similar to, those of a knowledge requirement for which the exemption is sought.
(3) The Board may give an exemption under subregulation (1) if it is satisfied that the ap plicant has successfully completed a relevant course of stu dy within the 7 years preceding the application or within a longer period specified in writing by the Board.
(4) An exemption under subregulation (1) is valid for 5 years from the date that the exem ption was granted or for a longer period specified in writing by the Board.
20.10 Employment requirements (1) The applicant:
(a) must have been em ployed in a position, or positions, that provided the applicant experience in the following skills: (i) searching patent records;
(ii) preparing, filing and pr osecuting patent applications in Australia;
(iii) preparing, filing and pr osecuting patent applications in other countries and or ganisations, particularly countries and organisations that are regarded as major trading partners with Australia;
(iv) drafting patent specifications; (v) providing advice on the interpretation, validity and
infringement of patents; and (b) must have been em ployed in a po sition, or positions, of
that kind for at least: (i) 2 continuous years; or
(ii) a total of 2 years within 5 continuous years.
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Examples of major trading partners for subparagraph (a) (iii) • European Community • Japan • New Zealand • People’s Republic of China • United States of America.
(2) The requirements set out in subregulation (1) m ust be evidenced by means of one or m ore statements of skill, as defined in regulation 20.11. Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a p atent attorney a person who satisfies certain conditions. Paragraph 198 (4) (c) requires that a perso n be employed as prescribed for not less than the prescribed period.
20.11 Statements of skill (1) For paragraph 20.3 (1) (d) and subregulation 20.10 (2), a
statement of skill is a statement by a registered patent attorney who has been registered for at le ast 5 years that, in the opinion of the reg istered patent attorney, the applicant h as the experience mentioned in one or m ore of subparagraphs 20.10 (1) (a) (i) to (v).
(2) Without limiting subregulation (1), a statement of skill must: (a) contain details of the basis of the opinion that the applicant
has the required experience; and (b) include details of the evidence on which the opinion is
based; described by reference to: (c) the skills mentioned in paragraph 20.10 (1) (a); and (d) the employment requirements mentioned in paragraph
20.10 (1) (b).
(3) If an applicant is unable to obtain a statem ent of skill f rom a registered patent attorney who ha s been registered for at least 5 years, the Board may, at the request of the applicant, prepare a statement of skill in relation to the applicant.
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20.12 Prescribed offences (1) An offence against the Act, the Designs Act 2003 or the Trade
Marks Act 1995 is a prescrib ed offence for paragraph 198 (4) (e) of the Act.
(2) An offence of dishonesty for which the m aximum penalty is imprisonment for at least 2 years is a prescribed offence for paragraph 198 (4) (f) of the Act. Note Subsection 198 (4) of the Act provides that the Designated Manager must register as a p atent attorney a person who satisfies certain conditions. Paragraph 198 (4) (e) requires that a pe rson not have be en convicted of a prescribed offence during the previous 5 years. Paragraph 198 (4) (f) requires that a person not be under sentence of imprisonment for a prescribed offence.
Part 3 Accreditation of courses of study
20.13 Accreditation of courses of study (1) The Board may accredit a course of study that is provid ed by
an institution if the Board is satisfied that the learning outcomes of the course would result in a person who passes the course acquiring som e or all of the knowledge of intellectual property law and practice that the Board considers necess ary for a person to practice as a registered patent attorney.
(2) In deciding whether or not to accredit the cou rse, the Board must consider whether the lear ning outcomes of the course meet some or all of the requirements set out in Schedule 5.
(3) In considering whether the learning outcom es of the course meets some or all of the requirements set out in Schedule 5, the Board must consider any inform ation provided by the institution.
(4) If the institution gives the Board sufficient information for the Board to decide whether the learning outcom es of the course meet a requirement mentioned in Schedule 5, the Board m ust, within 4 months after receiv ing the inform ation, decide whether to accredit the course.
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(5) Subject to s ubregulation (7), if the Board accredits a cou rse, accreditation is for 5 years.
(6) If an institution intends to change an accredited course, it must advise the Board in writing.
(7) The Board may revoke an accreditation if: (a) changes are made to the course; and (b) the Board decides that the course no longer achieves the
learning outcomes stated for the knowledge requirem ents to which it relates.
20.14 Provisional accreditation (1) The Board may provisionally accredit a course if:
(a) the institution has sought accreditation for the course; and (b) the information provided by the institution shows that the
course includes a requ irement mentioned in Schedule 5; and
(c) either: (i) the Board does not expect to com plete its
consideration of the cour se under regulation 20.13 before the start of the academic semester; or
(ii) the Board has not completed its consideration of the course under regulation 20.13 when the academ ic semester starts.
(2) The Board may provisionally accredit a changed course if: (a) a consequence of the change to the cours e is tha t the
learning outcomes of the course m ay meet fewer of the requirements set out in Schedule 5; and
(b) the Board considers that the changed course still achieves the learning outcom es stated for the knowledge requirements mentioned in Schedule 5.
(3) Provisional accreditation: (a) starts when the course is provisionally accredited; and (b) ends at the earlier of:
(i) when the course has concluded; and
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(ii) when a decision in rela tion to th e course is m ade under regulation 20.13.
Part 4 Board examinations
20.15 Board examinations (1) The Board may hold examinations for a requirement mentioned
in Schedule 5.
(2) The Board m ay appoint exam iners for the purposes of the examinations, and give them instructions about the setting and marking of papers.
(3) An examiner is entitled to be paid the fees that the Min ister determines in writing.
20.16 Time for holding Board examinations (1) The Board must arrange to publish in the Official Journal, with
adequate notice: (a) the time of each examination it holds and the place where
it is to be held; and (b) the deadline for applications for adm ission to sit for each
examination it holds.
(2) Subregulation (1) does not apply to a supplem entary examination under regulation 20.21.
20.17 Examinable subject matter From time to tim e, the Boar d must arrange to publish in the Official Journal particulars of: (a) the subject m atter covered by the courses for which
examinations are to be held in relation to the relevant requirements mentioned in Schedule 5; and
(b) the reading and study m aterial it recomm ends to candidates.
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20.18 Admission to sit for a Board examination An application by a person to sit for an exam ination must be in the form approved by the Board.
20.19 Notification of Board examination results As soon as practicable afte r an examination conducted by the Board, the Board m ust give to each candidate who sat for the examination his or her results in the examination.
20.20 Reasons for failure of Board examination (1) A candidate who fails an examination conducted by the Board
may apply to the Board in the form approved by the Board within 1 month after being told of the failure for a report of the reasons for the failure.
(2) For subregulation (1), a report may be given by: (a) the Board; or (b) if the Board approves — the exam iner appointed under
subregulation 20.15 (2).
20.21 Supplementary Board examination (1) An application by a pers on to sit for a supplem entary
examination must be in the form approved by the Board.
(2) The Board m ay let a candidate sit for a supplem entary examination if: (a) the candidate:
(i) failed an examination; and (ii) applies to the Board to sit for the supplem entary
examination within 1 month of being to ld of the failure; or
(b) the candidate: (i) did not sit f or the examination because of illness or
another reason that the Board reaso nably considers sufficient; and
(ii) applies to the Board to sit for the supplem entary examination within 1 month of the examination.
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(3) For an application under paragr aph (2) (a), the Board may take account of an exa miner’s comments on the candidate’s performance.
(4) A supplementary application under paragraph (2) (b) must be accompanied by eviden ce of the re ason for failing to sit the examination that was o btained at the tim e of the illness or of the occurrence of the other event giving rise to the reason.
Part 5 Maintaining registration
20.22 Requirements for remaining on Register (1) To remain on the Register, a registered patent attorney must,
for every year of registration: (a) pay the annual registration fee set out in item 105 or 106
of Schedule 7; and (b) provide evidence that he or she has undertaken continuing
professional education, as required by regulation 20.24.
(2) Paragraph (1) (b) applies to a reg istered patent attorney who seeks to remain on the Register for the 12 months commencing on 1 July 2009 and for each subsequent period of 12 months.
20.23 Payment of annual registration fee (1) The annual registration fee is payable by a registered patent
attorney to whom regulation 20.26 does not apply on 1 July in a year.
(2) The Designated Manager must, not later than 1 June in each year, give to each regis tered patent attor ney to wh om regulation 20.26 does not apply, notice of the fee that is payable.
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20.24 Continuing professional education — number of hours
(1) Subject to subregulation (3), a registered patent attorney must, in the 12 months imm ediately before the date on which the attorney applies for renewed registration, have com pleted 10 hours of activities th at the Designated Manager is satisfied are appropriate for an attorney to undertake as a m eans of maintaining the currency of his or her professional qualifications.
(2) The Board m ay publish guide lines setting out criteria for deciding whether or not activitie s are likely to be appropriate for an attorney to undertake as a m eans of maintaining the currency of his or her professional qualifications.
(3) A person who is both a registered patent attorney and a registered trade m arks attorney must, in the 12 m onths immediately before the date on which the attorney applies for renewed registration, have completed 15 hours of activities that the Designated Manag er is s atisfied are app ropriate for an attorney to undertake as a means of maintaining the currency of his or her professional qualifications.
(4) In this regulation: renewed registration means an application b y a regis tered patent attorney to renew his or her registration, other than the first application to renew his or her registration.
20.25 Method of demonstrating that continuing professional education has been undertaken
(1) In making an application for a renewed registration, a registered patent attorney must: (a) give the Designated Manager a written statement made by
the attorney that states that the a ttorney has met the requirements of this Part; and
(b) have kept written reco rds in relation to each continu ing professional education activity on which the atto rney relies.
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(2) For paragraph (1) (b), the records must: (a) enable an assessm ent of th e activity to conf irm that the
activity meets the requirements of this Part; and (b) be produced to the Designated Manager on request; and (c) be kept until 3 years after the end of the registration period
during which the activity was completed.
Part 6 Removal from Register
20.26 Voluntary removal of name from Register The Designated Manager must, on the written request of a registered patent attorney, remove the attorney’s name from the Register of Patent Attorneys.
20.27 Failure to pay annual registration fee If a regis tered patent a ttorney does not pay the annual registration fee by 31 J uly in the year in which the fee is payable, the Designated Manager must: (a) remove the nam e of the attorney from the Register of
Patent Attorneys; and (b) notify the attorney of that removal.
20.28 Failure to comply with continuing professional education requirements
(1) If a reg istered patent attorney fails to co mply with the requirements applicable to th e attorney under subregulation 20.25 (1) or (2), the Designated Manager may rem ove the attorney’s name from the Register for a period not exceed ing 6 months.
(2) If a registered patent attorney, without reasonable excuse: (a) provides a written statement under paragraph 20.25 (1) (a)
that is false in a material particular; or (b) fails to pro duce written records of his or her continuing
professional education activities in acco rdance with a request under paragraph 20.25 (2) (b);
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the Designated Manager m ust remove the attorney’s name from the Register.
(3) If the Des ignated Manager removes the nam e of a registered patent attorney from the Regist er under subregul ation (2), the name of the attorn ey must not be r eturned to the Registe r in accordance with regulation 20.29 for a period of 6 months from the day on which the attorney’s name was removed from the Register.
Part 7 Returning to Register
20.29 Restoring attorney’s name to Register (1) Subject to subregulation (2), if:
(a) a patent attorney’s name was re moved from the Register under regulation 20.26; and
(b) the attorney requests the Designated Ma nager, in writing, to restore the attorney’s name to the Register; and
(c) the attorney pays: (i) the annual registration f ee payable for the year in
which the reinstatement is made; and (ii) the fee mentioned in item 107 of Schedule 7;
the Designated Manager m ust restore the a ttorney’s name to the Register.
(2) A request under paragraph (1) (b) must be m ade no more than 3 years after th e removal of the atto rney’s name from the Register.
(3) The Designated Manager m ay, in restoring the nam e of a registered patent attorney to the Register, im pose a condition that, before 1 July of the follow ing registration year, the registered patent attorney m ust undertake such continuing professional education activitie s as the Des ignated Manager considers reasonable in the circumstances.
(4) If: (a) the Designated Manager imposes a condition; and
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(b) the registered patent attorney fails to com ply with the condition;
the Designated Manager may remove the name of the attorney from the Register.
20.30 Restoring attorney’s name to Register following payment of unpaid fee The Designated Manager must restore a patent attorney’s name to the Register if: (a) the attorney’s name was removed from the Register under
regulation 20.27; and (b) on or before 1 September of the year in which the
attorney’s name was removed from the Register, or w ithin such further period as the Designated Manager reasonably allows, the attorney: (i) pays the fee m entioned in regulation 20.27 and
item 107 of Schedule 7; (ii) makes an application in the form approved by the
Designated Manager.
20.31 Returning to Register in other circumstances (1) A person who has been a registered patent attorney, and to
whom regulation 20.29 or 20.30 does not apply, m ay apply to the Designated Manager to have his or her name restored to the Register.
(2) An application under subsection (1) m ust be in a form approved by the Designated Manager.
(3) An application under subsecti on (1) must be ac companied by the following: (a) evidence that the Boar d is satisf ied with the curren cy of
the person’s knowledge of inte llectual property law and practice;
(b) a statutory declaration, by the applicant, that he or she: (i) has not, in the 5 years preceding the application,
committed an of fence prescribed by subregulation 20.12 (1); and
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(ii) is not under sentence of imprisonment for an offence prescribed by subregulation 20.12 (2);
(c) a statutory declaration, by another person, that the person is of good fame, integrity and character;
(d) a fee that is the sum of the fee mentioned in item 105 or 106 of Schedule 7, whichever is applicable, and the fee mentioned in item 107 of Schedule 7.
(4) A statutory declaration under paragraph (3) (c) must contain details of the basis of the opini on that the applicant is of good fame, integrity and character
Part 8 Discipline
Division 1 General
20.32 Definitions In this Part: Code of Conduct means the document titled ‘Code of Conduct for Patent and Trade Marks Attorneys’ published by the Professional Standards Board for Patent and Trade Marks Attorneys, as existing on 1 July 2008. conduct includes an act and an omission. former attorney means a person whose registration as a patent attorney has been suspended or cancelled under this Part. professional misconduct means: (a) unsatisfactory professional conduct that involves a
substantial or consis tent failure to reach reasonable standards of competence and diligence; or
(b) any other conduct, whether occurring in connection with practice as an attorn ey or otherwis e, that sho ws that the attorney is not of good fame, integrity and character; or
(c) any contravention of a la w that is declared by these Regulations to be professional misconduct.
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unsatisfactory professional conduct includes conduct, in connection with practice as a regi stered patent attorney, that falls short of the s tandard of competence, diligence and behaviour that a m ember of the pu blic is entitled to expect o f an attorney.
20.33 Role of Board in disciplinary proceedings (1) The Board has the sole responsib ility for co mmencing and
conducting disciplinary proceedings against a registered patent attorney.
(2) The role of the Board in commencing disciplinary proceedings includes investigating, either as a result of information received or of its own motion, whether: (a) a registered patent attorney has been engaged in:
(i) professional misconduct; or (ii) unsatisfactory professional conduct; or
(b) at the tim e of his or her registration, a registered patent attorney did not hold either or both of the following: (i) the academic qualifications m entioned in
regulation 20.6; (ii) the knowledge requirements mentioned in regulation
20.8; or (c) a registered patent attorney obtained his or her registration
by fraud.
(3) The Board may commence proceedings before the Disciplinary Tribunal against a registered pate nt attorney if the Board is satisfied that there is a reas onable likelihood of the attorney being found guilty of unsatisfactory professional conduct.
(4) The Board must commence proceedings again st a reg istered patent attorney before the Disciplinary Tribunal if the Board is satisfied that there is a reas onable likelihood of the attorney being found guilty of an offence under subregu lation (2), other than of unsatisfactory professional conduct.
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(5) In deciding whether or not to comm ence disciplinary proceedings against a registered patent attorney, the Board may take into account patterns of behaviour of the attorney when deciding whether or not it is sati sfied that there is a reasonable likelihood of the attorn ey being found guilty of an offence under subregulation (2).
(6) In deciding whether or not a registered patent attorney has been engaged in: (a) professional misconduct; or (b) unsatisfactory professional conduct; the Board must consider whet her or not the attorney has complied with the Code of Conduct.
20.34 Board may require attorney to cooperate with investigation
(1) In investigating whether or not to commence proceedings against a registered patent atto rney, the Board may request the attorney who is the subject of the investigation to provide information.
(2) The failure, without reasonable excuse, of a registered patent attorney to provide information requested by the Board under subregulation (1) is unsatisfactory professional conduct.
20.35 Commencing disciplinary proceedings (1) The Board must commence disciplinary proceedings by way of
a notice given to the Disciplinary Tribunal.
(2) A notice must be in writing and must set out the charges that are made against the registered patent attorney.
(3) The Board must, as soon as pr acticable after giving a notice to the Disciplinary Tribunal, give a copy of the notice to the registered patent attorney who is the subject of the notice.
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Division 2 Proceedings in Disciplinary Tribunal
20.36 Procedure of Disciplinary Tribunal (1) Subject to this Part, the Disciplinary Tribunal m ay determine
its procedure.
(2) Proceedings before th e Disciplinary Tribunal are to be conducted quickly and infor mally, while allow ing for proper consideration of the matter before that Tribunal.
(3) The Disciplinary Tribunal is not bound by the rules of evidence but may be informed on any matter in the manner it chooses.
(4) The Disciplinary Tribunal may take evidence on oath or on affirmation and, for that purpose, m ay administer an oath or affirmation.
20.37 Notification of hearing of disciplinary proceedings (1) The Disciplinary Tribunal m ust, as soon as practicable after
receiving a notice under regu lation 20.35 in relation to a registered patent attorney, fix a time and place for the hearing of the charges set out in the notice.
(2) The Disciplinary Tribunal m ust, as soon as practicable after fixing a tim e and date for the hearing of charges against a registered patent attorney, notify the attorney and the Board of that time and place.
(3) The time of hearing must not be less than 21 days after the day on which the registered patent attorney is notified of the time and place for the hearing.
20.38 Hearings to be public except in special circumstances
(1) Subject to subregulation (2), a hearing before the Disciplinary Tribunal must be in public.
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(2) If the Disciplina ry Tribunal is reas onably satisfied that it is desirable to do so, in the public interest or b ecause of the confidential nature of any evid ence or m atter, the T ribunal may: (a) direct that a hearing, or a pa rt of a hearing, is to take place
in private and give directions as to the persons who may be present; and
(b) give directions restricting or prohibiting the publication or disclosure of: (i) evidence given before the Tribunal, whether in
public or in private; or (ii) matters contained in docum ents lodged with the
Tribunal or received in evidence by it.
(3) A person must com ply with a direction given to him or her under this regulation.
Penalty: 5 penalty units.
20.39 Representation before Disciplinary Tribunal (1) At the hearing of proceedings before the Disciplinary Tribun al,
a party to the proceedings m ay appear in person or be represented by a legal practitioner.
(2) The Disciplinary Tribunal m ay allow a person to be represented by a person who is not a legal practitioner.
(3) A party to proceedings before the Disciplinary Tribunal, or his or her representative, may re quest that Tribunal to summon witnesses.
20.40 Summoning of witnesses (1) For the purpose of the hearing of a charge ag ainst a registered
patent attorney before the Disc iplinary Tribunal, the Tribunal may, by instrument in writing signed by the person constituting the Tribunal: (a) summon any person, other th an the attorney, to appear
before the Tribunal to give evidence about the charge and to produce any docum ents or articles mentioned in the summons; or
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(b) summon the attorney to appear before the Tribunal: (i) to produce any docum ents or articles m entioned in
the summons; and (ii) to give ev idence to identify the docum ents or
articles.
(2) A registered patent attorn ey summoned under this regulation must appear in person.
20.41 Offences by persons appearing before Disciplinary Tribunal
(1) A person summoned to appear before the Disciplinary Tribunal must comply with the summons by: (a) appearing as required by the summons; and (b) producing documents or articles as required by the
summons; and (c) appearing and reporting to the Tribunal, as required.
Penalty: 10 penalty units.
(2) It is a d efence to a prosecution for an offence again st subregulation (1) if: (a) the defendant is prevente d or hindered from complying
with the summons by: (i) a circumstance mentioned in Part 2.3 of the Criminal
Code; or (ii) any other circum stance that the Disciplinary
Tribunal reasonably considers is an im pediment to the defendant complying with the summons; or
(b) in relation to paragraph (1) (c) — the defendant is excused by the Tribunal.
Note A defendant bears an ev idential burden in relation to the matters mentioned in subparagraph (2) (a) (i) (see section 13.3 of the Criminal Code).
(3) A person commits an offence if: (a) the person:
(i) is not a registered patent attorney to whom subregulation (5) applies; and
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(ii) appears as a witn ess before the Discip linary Tribunal; and
(iii) has been paid expenses and allowances; and (b) the expenses and allowances have been determ ined by the
Tribunal in accordance with Part 2 of Schedule 8; and (c) the person refuses:
(i) to be sworn or make an affirmation; or (ii) to answer a question relevant to the evidence that he
or she was summoned to give.
Penalty: 10 penalty units.
(4) Strict liability applies to the physical elem ent of an offe nce against subregulation (3) that is constituted by: (a) the circumstance mentioned in subparagraph (3) (a) (i);
and (b) the circumstance mentioned in paragraph (3) (b). Note For strict liability, see section 6.1 of the Criminal Code.
(5) A person commits an offence if the person: (a) is a reg istered patent attorney again st whom proceedings
have been instituted; and (b) is summoned to appear at a hearing before the
Disciplinary Tribunal in respect of those proceedings; and (c) refuses:
(i) to be sworn or to make an affirmation; or (ii) to answer a question relevant to the evidence that he
or she was summoned to give.
Penalty: 10 penalty units.
(6) It is a defence for a person re ferred to in subregulation (3) or (5) to refuse to answer a quest ion or to produce a docum ent or article, if the answer to the question, or the document or article, may tend to prove that he or she has comm itted an of fence against a law of the Commonwealth or of a State or Territory.
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20.42 Protection of person constituting Disciplinary Tribunal, witnesses etc
(1) A person: (a) constituting or acting as the Disciplinary Tribunal; or (b) appointed under subregulation 20.64 (2); has, in the exercise of the pow ers and the p erformance of the functions of that Tribunal under this Part, the sam e protection and immunity as a Justice of the High Court.
(2) A member of the Board has, in exercising a power under this Part, the same protection and immunity as a Justice of the High Court.
(3) A legal practitioner or ot her person appearing before the Disciplinary Tribunal has the same protection and immunity as a barrister has in appearing for a party in proceedings in the High Court.
(4) Subject to this Part, a pers on summoned to attend or appearing before the Disciplinary Tribunal as a witness: (a) has the same protection; and (b) is, in addition to the penalties provided by this Part,
subject to the same liabilities; as a witness in proceedings in the High Court.
20.43 Decision of Disciplinary Tribunal (1) If the Disciplinary Tribunal has heard a charge of professional
misconduct against a registered patent attorney, it may find the attorney guilty of professional misconduct.
(2) If the Disciplinary Tr ibunal has heard a charge of unsatisfactory professional conduct against a registered patent attorney, it m ay find the atto rney guilty of unsatisfactory professional conduct.
(3) If the Disciplinary Tribunal has heard a charge that a registered patent attorney was unqualified at the tim e of his or her registration, that Tribunal may find the attorney guilty of being unqualified at the time of registration.
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(4) If the Disciplinary Tribunal has heard a charge that a registered patent attorney obtained his or her registration by fraud, that Tribunal may find the attorney guilty of obtaining his or her registration by fraud.
20.44 Penalties — professional misconduct (1) Subject to subregulation (2), if the Disciplinary Tribunal finds
a registered patent attorney guilty of professional misconduct, it may: (a) cancel the attorney’s registration as a patent attorney; or (b) suspend the attorney’s registration as a patent attorney for
a period of between 6 and 12 months.
(2) The Disciplinary Tribunal may, in addition to cancelling or suspending a registered patent attorney’s registration under subregulation (1), impose conditions on the attorney’s return to the register after the cancellation h as been lifted or the period of suspension has elapsed.
(3) Without limiting subregulation (2), the con ditions that the Disciplinary Tribunal may impose include either or both of the following: (a) that the attorney undertake additional continuing
professional education, as specified by the Tribunal; (b) that the attorney work for a period of ti me, not exceeding
2 years, under the supervision of a person who has been a registered patent attorney for a period not less than 5 years.
(4) If a reg istered patent attorney is als o a regis tered trade marks attorney, the Disciplinary Tribunal may also cancel or suspend the attorney’s registration as a trade marks attorney.
20.45 Penalties — unsatisfactory professional conduct (1) Subject to subregulation (2), if the Disciplinary Tribunal finds
a registered patent attorn ey guilty o f unsatisfactory professional conduct, it may: (a) suspend the attorney’s registration as a patent attorney for
a period of not more than 12 months; or
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(b) administer a public reprimand to the attorney.
(2) The Disciplinary Tribunal may, in addition to suspending a registered patent attorney’s registration under subregulation (1), also impose conditions on th e attorney’s return to the register after the period of suspension has elapsed.
(3) Without limiting subregulation (2), the con ditions that the Disciplinary Tribunal may impose include either or both of the following: (a) that the attorney undertake additional continuing
professional education, as specified by the Tribunal; (b) that the attorney work for a period of ti me, not exceeding
2 years, under the supervision of a person who has been a registered patent attorney for a period of not less than 5 years.
20.46 Finding that attorney was unqualified at time of registration If the Disciplinary Tribunal has heard a charge against a registered patent attorney that the attorney was unqualified at the time of his or her registrati on and finds the charge proved, that Tribunal may: (a) if the atto rney has, since th at time, obtained tha t
qualification or the qualification is no longer required for registration — reprimand the attorney; or
(b) in any other case — cancel his or her registration.
20.47 Finding that registration obtained by fraud If the Disciplinary Tribunal fi nds that a registered patent attorney obtained his or her regi stration by fraud, that Tribunal must cancel the registration of the attorney.
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20.48 Matters that may be considered in determining penalties In deciding what to do about a registered patent attorney under regulation 20.44 or 20.45, the Disciplinary Tribunal m ay take into account the findings about the conduct of the attorney in any other proceedings: (a) brought before that Tribunal; or (b) brought before the Patent Attorneys Disciplinary Tribunal
under the former attorneys regulations.
20.49 Findings of Disciplinary Tribunal (1) If the Disc iplinary Tribunal reprimands a registered patent
attorney, or suspends or cancels the attorney’s registration, the Tribunal must give a written notice of the f inding of the Tribunal against the attorney that sets out particulars of the reprimand, suspension or cancellation to: (a) the attorney; and (b) the Board; and (c) the Designated Manager.
(2) If the registration of a register ed patent attorney is suspended, the Designated Manager m ust note the suspension and its duration in the Register of Patent Attorneys.
(3) If the registration of a r egistered patent attorney is cancelled, the Designated Manager must remove the name of the attorney from the Register of Patent Attorneys.
(4) If the Disciplinary Tribunal does not find a charge proved, that Tribunal must notify the register ed patent attorney and the Board accordingly.
20.50 Notification and publication of decisions of Disciplinary Tribunal The Disciplinary Tribunal must, within 14 days after m aking a decision under regulation 20.44, 20.45, 20.46 or 20.47: (a) prepare a written statement that:
(i) sets out the decision of the Tribunal; and
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(ii) sets out the reasons for the decision; and (iii) sets out the findings on any m aterial questions of
fact; and (iv) refers to ev idence or other m aterial on which the
findings of fact are based; and (b) give:
(i) the registered patent attorney who is the subject of the notice; and
(ii) the Board; a copy of the statement referred to in paragraph (a); and
(c) publish, in the Official Journal, a written statem ent that sets out the decision of the Tribunal; and
(d) arrange for the publicati on of a copy of the statem ent referred to in paragraph (a).
20.51 Completion of outstanding business (1) If the registration of a former attorney has been cancelled under
paragraph 20.44 (1) (a), the Disciplinary Tribunal may appoint a registered patent attorney to carry on th e practice of the former attorney until all outstanding matters are disposed of.
(2) If the regis tration of th e former attorney has been suspended under paragraph 20.44 (1) (b) or 20.45 (1) (a), the Disciplinary Tribunal may appoint a registered patent attorney to carry on the practice of the form er attorney for the period of the suspension or for a specified peri od, not longer than the period of suspension.
(3) The Disciplinary Tribunal must not appoint a registered patent attorney under subregulation (1 ) or (2) unless the registe red patent attorney consents to the appointment.
(4) This regulation does not allow a registered patent attorney to act as a registered patent attorney on behalf of a person without the consent of the person.
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20.52 Former attorney may be required to provide assistance
(1) A registered patent attorney appointed to carry on the practice of a for mer attorney m ay give a written notice requiring the former attorney to make available to the attorney so appointed: (a) any information about the practice that he or she m ay
reasonably require; or (b) any books, accounts o r other docu ments concerning th e
practice that he or she may reasonably require; or (c) any moneys held by the former attorney:
(i) on behalf of a client; or (ii) that have been paid by a client in respect of services
not yet performed for the client.
(2) A former attorney w ho has been given a notice under subregulation (1) must not refuse to comply with a requirement in the notice.
Penalty: 5 penalty units.
(3) It is a d efence to a prosecution for an offence again st subregulation (2) if the former attorney is prevented or hindered from complying with a requirement in the notice by: (a) a circumstance mentioned in Part 2.3 of the Criminal
Code; or (b) any other circum stance that the Disciplinary Tribunal
reasonably considers is an im pediment to the defendant complying with the summons.
Note A defendant bears an evidential burden in relation to the question opf whether he or she has a reasonable excuse (see section 13.3 of the Criminal Code).
Part 9 Rights of registered patent attorneys
20.53 Lien A registered patent atto rney has the sam e right of lien over documents and property of a client as a solicitor.
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Part 10 Administration
Division 1 Professional Standards Board for Patent and Trade Marks Attorneys
20.54 Constitution of Board (Act s 227A) The Board is constituted by: (a) the Chairperson, appointed by the Minister; and (b) either:
(i) the person holding, or carrying out the duties of, the office of the Director-General of the Division o f the Department known as IP Australia; or
(ii) the nominee of that person; and (c) at least 2 other suitably qualified members, appointed by
the Minister.
20.55 Term of office of Board members The Minister may appoint a member of the Board for a term of up to 3 years.
20.56 Resignation and removal of members from Board (1) A member of the Board m ay resign by giving the Minister his
or her resignation in writing.
(2) The Minister may remove the Chairperson of the Board if the Chairperson: (a) has been absent from 3 consecutive meetings of the Board
without leave given by the Board under regulation 20.60; or
(b) is convicted in Australia of an offence punishable by imprisonment for at least 12 months; or
(c) cannot perform his or her duties as Chairperson of the Board; or
(d) has behaved in an offensive or disorderly way, or in a way that is likely to adversely affect the Board’s reputation; or
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(e) has carried out his or he r duties as Chairperson of the Board inefficiently; or
(f) becomes bankrupt; or (g) applies to take the benef it of a law f or the relief of
bankrupt or insolvent debtors; or (h) has entered into a debt agreem ent under Part IX of the
Bankruptcy Act 1966; or (i) compounds with his or her cr editors or assigns his or her
salary and allowances for their benefit.
(3) The Minister may remove a m ember of the Board if the member: (a) has been absent from 3 consecutive meetings of the Board
without leave given by the Chairperson; or (b) is convicted in Australia of an offence punishable by
imprisonment for at least 12 months; or (c) cannot perform his or her duties as a m ember of the
Board; or (d) has behaved in an offensive or disorderly way, or in a way
that is likely to adversely affect the Board’s reputation; or (e) has carried out his or her duties as a member of the Board
inefficiently; or (f) becomes bankrupt; or (g) applies to take the benef it of a law f or the relief of
bankrupt or insolvent debtors; or (h) has entered into a debt agreem ent under Part IX of the
Bankruptcy Act 1966; or (i) compounds with his or her cr editors or assigns his or her
salary and allowances for their benefit.
20.57 Meetings of Board (1) The Board must hold as many meetings as are necessary for the
performance of its functions.
(2) The Chairperson may, at any time, by notice in writing to the members, call a m eeting of the Board at the tim e and place specified in the notice.
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20.58 Member presiding at meetings of Board (1) The Chairperson must preside at all meetings of the Board at
which he or she is present.
(2) In the absence of the Chairperson from a meeting, the members present must appoint one of the m embers present at the meeting to preside.
(3) The Chairperson or a m ember who presides at a m eeting has a deliberative vote and, in the event of an equality of votes, also has a casting vote.
20.59 Quorum for Board meetings At a meeting of the Board, a quorum is formed by the majority of the members of the Board.
20.60 Absence of Chairperson from meeting — leave from Board If the Chairperson is ab sent from a meeting of the Board, the members present m ust decide whether to give leave to the Chairperson.
Division 2 Patent and Trade Marks Attorneys Disciplinary Tribunal
20.61 Establishment of Disciplinary Tribunal The Patent and Trade Marks Attorneys Disciplinary Tribunal is established.
20.62 Disciplinary Tribunal — substantive appointments (1) The Minister may, in writing, appoint a person to constitute the
Disciplinary Tribunal.
(2) A copy of the instrum ent of appointment must be published in the Official Journal.
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(3) A person so appointed holds the office for the period specifie d in the instrument.
(4) A person so appointed m ay resign in writing given to the Minister.
(5) The Minister m ay remove a person so appointed from office for inefficiency, misbehaviour or incapacity.
(6) If a person so appointed: (a) becomes bankrupt, applies to take the benefit of a law for
the relief of bankrupt or insolvent debtors, com pounds with his or her creditors or makes an assignment of his or her remuneration for their benefit; or
(b) is convicted in Australia of an offence punishable by imprisonment for 12 months or longer; or
(c) fails, without reasonable excuse, to disclose a conf lict of interest in accordance with regulation 20.64;
the Minister must remove the person from office.
20.63 Disciplinary Tribunal — acting appointments (1) Subject to subregulation (2 ), the Minister may, in writing,
appoint a person to act as the Disciplinary Tribunal: (a) during a v acancy in the office, whether or not an
appointment has been previously made to the office; or (b) during any period, or duri ng all periods, when the holder
of the office is, o r is expected to be, absent from duty or from Australia or is, for any reason, unable to perform the functions of the office.
(2) A person appointed to act dur ing a vacancy m ust not continue to act for more than 12 months.
(3) A copy of the instrum ent of appointment must be published in the Official Journal.
(4) The Minister: (a) may terminate the appointment at any time; and
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(b) must terminate the appoin tment if the person appointed fails, without reasonable excuse, to disclose a conf lict of interest in accordance with regulation 20.64.
(5) Anything done by or in relati on to a person purporting to act under the appointment is not invalid only because: (a) the need for the appointment had not arisen; or (b) there was a defect or ir regularity in connection with the
appointment; or (c) the appointment had ceased to have effect; or (d) the need to act had not arisen or had ceased.
20.64 Disclosure of interest (1) If a person constituting, or ac ting as, the Disciplinary Tribunal
has or acquires an interest that could conflict with the proper performance of his or her functio ns in relation to proceedings he or she is to hear, the person: (a) must tell the parties to th e proceedings about the interest;
and (b) must not perform those f unctions without the consent of
the parties.
(2) If such a person is unable to perf orm his or her functions because of a conflic t of interest, the Minister may in writing appoint another person to be th e Disciplinary Tribunal for the purpose of conducting or completing those proceedings.
(3) A copy of the instrum ent of appointment must be published in the Official Journal.
(4) A person so appointed m ay exercise all the powers and must perform all of the functions of the Disciplinary Tribunal in relation to those proceedings.
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20.65 Qualifications for appointment to, or acting as, Disciplinary Tribunal A person is not qualified to be appointed under subregulation 20.62 (1) or 20.63 (1) or 20.64 (2) unless he or she is enrolled, and has for not less than 7 y ears been enrolled, as a legal practitioner.
[3] Paragraph 22.11 (4) (b) substitute (b) filing, during the term of a standard patent as required by
subsection 71 (2) of the Act, an application under subsection 70 (1) of the Act for an extension of the term of the patent;
(c) an action or step prescribed in Chapter 20.
[4] Paragraphs 22.26 (2) (b) and (c) substitute (b) the Board under the following provisions:
(i) regulation 20.5 (‘evidence of ac ademic qualifications’);
(ii) regulation 20.7 (‘evidence of knowledge requirements’); or
(c) the Designated Manager under the following provisions: (i) regulation 20.28 (‘failure to comply with continuing
professional education requirements’); (ii) regulation 20.29 (‘restoring attorney’s nam e to
Register’); (iii) regulation 20.30 (‘restoring attorney’s nam e to
Register following payment of unpaid fee’); (iv) regulation 20.31 (‘returning to R egister in other
circumstances’); or (d) the Disciplinary Tribunal under the following provisions:
(i) regulation 20.43 (‘decision of Disciplinary Tribunal’);
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(ii) regulation 20.44 (‘penalties — professional misconduct’);
(iii) regulation 20.45 (‘penalties — unsatisfactory professional conduct’);
(iv) regulation 20.46 (‘finding that attorney was unqualified at time of registration’);
(v) regulation 20.47 (‘finding that registration obtained by fraud’).
[5] Regulations 23.19 to 23.24 omit
[6] Regulations 23.27 to 23.31 omit
[7] Schedule 5 substitute
Schedule 5 Knowledge requirements (regulation 20.8)
Part 1 Overall requirement 1. A course of study m ust provide for a student to have an
appropriate level of: (a) knowledge and practical appl ication so that the student
can give advice about applicable categories of protection for particular activities; and
(b) appreciation of the advantages of each for m of protection for a client; and
(c) understanding of how to get and m aintain appropriate protection for a client; and
(d) understanding of the requi red standard of professional conduct.
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Part 2 Legal process and overview of intellectual property
2. A course of study m ust provide for a student to have an appropriate level of understand ing of the Australian legal system and how intellectual prope rty rights may be protected, including by reference to: (a) the Australian legal system; and (b) intellectual property rights.
Part 3 Professional conduct 3. A course of study m ust 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 4. A course of study m ust provide for a student to have an
appropriate level of understandin g of the principles of trade marks, patents, designs and copyright.
Part 5 Intellectual property systems 5. A course of study m ust provide for a student to have an
appropriate level of understandi ng of the system of protecting and exploiting trade m arks, patents and designs, both in Australia and other countries. This includes: (a) the ability to draft patent specifications; and (b) an understanding of patent specifications; and (c) the ability to advise on the interpretation, validity and
infringement of patent specifications.
[8] Schedule 7, Part 1, item 107 substitute
107 Applying under regulation 20.29, 20.30 or 160 20.31
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Schedule 2 Amendments of Trade Marks Regulations 1995 (regulations 4 and 5)
[1] Part 20 substitute
Part 20 Registered trade marks attorneys
Division 1 General
20.1 Interpretation (1) In this Part:
AQF means the Australian Qualifications Framework. Board means the Professional Standards Board for Patent and Trade Marks Attorneys. Register or Register of Trade Marks Attorneys means the register kept under section 228A of the Act.
(2) For regulation 20.6, the higher education sector comprises: (a) universities; and (b) higher education institutions other than universities; and (c) higher education providers.
Division 2 Obtaining registration for first time
20.2 Form of application An application for registration as a trade marks attorney must: (a) be in writing, in a fo rm approved by the Designated
Manager; and
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(b) be accompanied by evidence and m aterial mentioned in regulation 20.3; and
(c) be accompanied by th e fee m entioned in item 28 of Schedule 9.
20.3 Evidence that applicant meets registration requirements
(1) An application for regis tration as a trade m arks attorney must be accompanied by the following: (a) evidence that the Board is satisfied that the app licant has,
or is entitled to the award of, an academic qualification of a kind mentioned in regulation 20.6;
(b) evidence that the Board is satisfied that the app licant has the knowledge of intellectual property law and practice that is requ ired for a person to practice as a trade m arks attorney;
(c) a statutory declaration, by the applicant, that he or she: (i) has not, in the 5 years preceding the application,
committed an of fence prescribed by subregulation 20.10 (1); and
(ii) is not under sentence of imprisonment for an offence prescribed by subregulation 20.10 (2);
(d) a statutory declaration, by another person, that the applicant is of good fame, integrity and character.
(2) A statutory declaration under paragraph (1) (d) must contain details of the basis of the opini on that the applicant is of good fame, integrity and character.
20.4 Certificate of registration If the Designated Manager registers a person as a trade m arks attorney, the Designated Manage r must give the person a certificate of registration.
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20.5 Evidence of academic qualifications (1) The Board must be satisfie d that a person has a qualification
mentioned in regulation 20.6 if: (a) the person makes an application in the form approved by
the Board; and (b) the application is accompanied by:
(i) evidence that the person has the qualification; and (ii) the original or a certified copy of an academic record
that shows the units that make up the qualification.
(2) The Board must, within 42 days of deciding whether or not it is satisfied that the person has the qualification, notify the person, in writing, of its decision. Note A decision that a person does not have a qualification is reviewable under regulation 21.35.
20.6 Academic qualifications The Designated Manager m ust not approve an applicant for registration as a trade m arks attorney unless the applicant has or is entitled to: (a) an AQF qualification from the higher education sector; or (b) a qualification awarded by an overseas institution that the
Board is satisf ied is eq uivalent to an AQF qualif ication from the higher education sector.
20.7 Evidence of knowledge requirements (1) The Board must be satisfied that a person has a knowledge
requirement mentioned in regulation 20.8 if: (a) the person makes an application in the form approved by
the Board; and (b) the application is accompanied by:
(i) evidence that th e applicant has the relevant knowledge; and
(ii) the original or a certif ied copy of any academ ic record that shows the study that contributes to the knowledge.
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(2) The Board must, within 42 days of deciding whether or not it is satisfied that the person has the knowledge requirement, notify the person, in writing, of its decision. Note A decision that a person does not have a knowledge requirement is reviewable under regulation 21.35.
20.8 Knowledge requirements (1) The Designated Manager m ust not approve an applicant for
registration as a trade m arks attorney unless the Board is satisfied that the applicant ha s the knowledge of intellectual property law and practice that is required for a person to practice as a trade marks attorney.
(2) Subject to subregulations (3), (4) and (5), the Board m ust, in satisfying itself whether or not an applicant has the knowledge of intellectual property law and pr actice that is required for a person to practice as a trade m arks attorney, take into account whether the applicant has qualifications that meet the minimum requirements set out in Schedule 5 to the Patents Regulations 1991. Note Schedule 5 to the Patents Regulations 1991 applies to a trade m arks attorney as modified by regulation 20.11 of these Regulations.
(3) The Board m ay publish guide lines setting out criteria for deciding whether or not areas of study: (a) are likely to m eet the m inimum requirements set out in
Schedule 5 to the Patents Regulations 1991; and (b) are likely to provide a pers on with the appropriate level of
understanding to practice as a trade marks attorney.
(4) The Board m ay be satisfied th at an applicant has the knowledge of intellectual propert y law and practice that is required for a person to practice as a trade marks attorney, despite the fact that the a pplicant does not m eet every requirement set out in Schedule 5 to the Patents Regulations 1991.
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(5) The Board is not able to be satisfied that the applicant has the knowledge of intellectual propert y law and practice that is required for a person to practice as a trade marks attorney if the knowledge requirements on which the applicant relies were obtained more than 10 years prior to the application.
(6) If an applicant has been granted an exemption under regulation 20.9, the applicant is taken to meet the requirem ent in Schedule 5 to the Patents Regulations 1991 for which the exemption is granted. Note Subsection 228A (4) of the Act provides that the De signated Manager must register as a trade marks attorney a pe rson who satisfies certain conditions. Paragraph 228A (4) (a) requires that a person hold such qualifications as are speci fied in, or ascertained in acc ordance with, the Regulations.
20.9 Exemption from a requirement in Schedule 5 to Patents Regulations
(1) The Board may exempt an applicant from having to satisfy all or some of the requirem ents mentioned in Schedule 5 to the Patents Regulations 1991.
(2) The Board must not give an exemption to an applicant unless: (a) the applicant makes an a pplication in the form approved
by the Board; and (b) the applicant gives the Board enough information for the
Board to be satisfied under paragraph (c); and (c) the Board is satisfied that:
(i) the applicant has passed a course of study at a satisfactory level; and
(ii) the course of study ha s outcomes that are the same as, or similar to, those of a knowledge requirement for which the exemption is sought.
(3) The Board may give an exemption under subregulation (1) if it is satisfied that the ap plicant has successfully completed a relevant course of stu dy within the 5 years preceding the application or within a longer period specified in writing by the Board.
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(4) An exemption under subregulation (1) is valid for 5 years from the date that the exem ption was granted or for a longer period specified in writing by the Board.
20.10 Prescribed offences (1) For paragraph 228A (4) (c) of the Act, an offence against the
Act, the Designs Act 2003 or the Patents Act 1990 is a prescribed offence.
(2) For paragraph 228A (4) (d) of the Act, an offence of dishonesty for which the m aximum penalty is im prisonment for at least 2 years is a prescribed offence.
20.11 Application of Schedule 5 to Patents Regulations Schedule 5 to the Patents Regulations 1991 applies to obtaining registration as a trade m arks attorney for the firs t time as if item 5 in Part 5 provided:
‘5. A course of study m ust provide for a student to have an appropriate level of understa nding of the system of protecting and exploiting trade marks, both in Australia and other countries.’
Division 3 Accreditation of courses of study
20.12 Accreditation of courses of study Part 3 of Chapter 20 of the Patents Regulations 1991 applies to the accreditation of a course of study for the purposes of Schedule 5 to the Patents Regulations 1991 in its application to the registration of a trade m arks attorney under this Part as if references to ‘patent attorney’ were references to ‘trade m arks attorney’.
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Division 4 Board examinations
20.13 Board examinations Part 4 of Chapter 20 of the Patents Regulations 1991 applies to a requirement referred to in Schedule 5 to the Patents Regulations 1991 in its application to the registration of a trade marks attorney under this Part as if references to ‘patent attorney’ were references to ‘trade marks attorney’.
Division 5 Maintaining registration, removal from Register and returning to Register
20.14 Maintaining registration, removal from Register and returning to Register Parts 5, 6 and 7 of Chapt er 20 of the Patents Regulations 1991 apply to a trade marks attorney in its app lication to the registration of a trade marks attorney under this Part as if: (a) references to ‘paten t attorney’ we re references to ‘trade
marks attorney’; and (b) references to the ‘Re gister’ were reference s to th e
‘Register of Trade Marks Attorneys’; and (c) references to ‘trade m arks attorney’ were references to
‘patent attorney’; and (d) the reference in paragraph 20.22 (1) (a) of the Patents
Regulations 1991 to ‘item 105 or 106 of Schedule 7’ were a reference to ‘item 29 or 30 of Schedule 9’; and
(e) the reference in regulations 20.26 and 20.27 of the Patents Regulations 1991 to th e ‘Register of Patent Attorneys ’ were a reference to the ‘Regis ter of Trade Marks Attorneys’; and
(f) the reference in regulat ions 20.29, 20.30 and 20.31 of the Patents Regulations 1991 to ‘item 107 of Sc hedule 7’ were a reference to ‘item 31 of Schedule 9’.
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Division 6 Discipline
20.15 Discipline Part 8 of Chapter 20 of the Patents Regulations 1991 applies to a registered trade marks attorney as if: (a) references to a ‘registered patent attorney’ were references
to a ‘registered trade marks attorney’; and (b) references to a ‘reg istered trade m arks attorney’ were
references to a ‘registered patent attorney’; and (c) the reference in regulation 20.49 of the Patents
Regulations 1991 to ‘the Register of Patent Attorneys’ were a reference to ‘the Regis ter of Trade Marks Attorneys’.
Division 7 Rights of registered trade marks attorneys
20.16 Lien A registered trade m arks attorney has the s ame right of lien over documents and property of a client as a solicitor.
[2] Paragraph 21.28 (1) (s) substitute (s) the filing of a docum ent or the giving of advice to the
Registrar under Part 3A; (t) an action or step prescribed in Part 20.
[3] Paragraphs 21.35 (2) (a) and (b) substitute (a) the Board under the following provisions:
(i) regulation 20.5 (‘evidence of ac ademic qualifications’);
(ii) regulation 20.7 (‘evidence of knowledge requirements’); or
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(b) the Designated Manager under the following provisions of the Patents Regulations 1991 in their application to trade marks attorneys: (i) regulation 20.28 (‘failure to comply with continuing
professional education requirements’); (ii) regulation 20.29 (‘restoring attorney’s nam e to
Register’); (iii) regulation 20.30 (‘restoring attorney’s nam e to
Register following payment of unpaid fee’); (iv) regulation 20.31 (‘returning to the Register in other
circumstances’); or (c) the Disciplinary Tribun al under the following provision s
of the Patents Regulations 1991 in their application to trade marks attorneys: (i) regulation 20.43 (‘decision of Disciplinary
Tribunal’); (ii) regulation 20.44 (‘penalties — professional
misconduct’); (iii) regulation 20.45 (‘penalties — unsatisfactory
professional conduct’); (iv) regulation 20.46 (‘finding that attorney was
unqualified at time of registration’); (v) regulation 20.47 (‘finding that registration obtained
by fraud’).
[4] Schedule 9, item 31 substitute
31 Applying to be restored to the Register, as $160 authorised by regulation 20.14
Note 1. All legislative instruments and compilations are registered on the Federal
Register of Legislative Instru ments kept under the Legislative Instruments Act 2003. See http://www.frli.gov.au.
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