Applying for registration as a trans-Tasman patent attorney

Under the Patents Act 2013 and the Patents Regulations 2014, only a trans-Tasman registered patent attorney (or a registered patent attorney firm) may provide the following advice and related services for gain (such as payment):

apply for and obtain a patent in New Zealand and Australia on behalf of their clients
prepare and amend patent specifications
dispense advice (other than advice of a scientific or technical nature) on the validity of patents and their infringement.

The registration of patent attorneys in New Zealand and Australia is currently governed by a joint registration regime between New Zealand and Australia. This joint regime is overseen by the Trans-Tasman IP Attorneys Board (TTIPAB) and a Designated Manager.

Joint trans-Tasman registration regime

Criteria for registration

Individuals

The criteria for registration as a patent attorney are set out under Chapter 20, Part 2 of the Australian Patents Regulations 1991.

Australian Patents Regulations 1991 — Australia Legislation

To register, an individual must apply to the Designated Manager and provide the following:

evidence that they have an academic qualification in a suitable technical field
evidence from the TTIPAB that they have the required knowledge of intellectual property law and practice (which normally comprises completing courses of study accredited by the TTIPAB)
declaration that the applicant has not committed an offence in the last 5 years or is subject to a sentence of imprisonment
declaration (by another person) of the applicant’s good fame, integrity and character
payment of the prescribed registration fee
one or more statements of skill from a New Zealand or Australian resident patent attorney that the applicant has relevant patents-related work experience (more details below).

Relevant patents-related work experience must include employment for at least two years in a patent attorney firm or company, and proficiency in:

searching patent records
preparing, filing and prosecuting patent applications in New Zealand, Australia and other specified countries
drafting patent specifications
giving advice on the interpretation, validity and infringement of patents.

Incorporated patent attorney firms

Incorporated patent attorney firms may also be registered, and may provide advice and services about patents.

To register, an incorporated firm must apply to the Designated Manager and provide the following:

the name of at least one director who is a registered patent attorney
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.

Patent attorney partnerships

Patent attorney partnerships do not need to be registered. However, the partnership must have at least one registered patent attorney partner. Otherwise it is an offence for the partnership to describe or hold itself out as providing patents advice and services.

Limited partnerships

Limited partnerships may not describe or hold themselves as patent attorneys or patent agents, nor can they act as patent attorneys.

How to apply

Applications for registration as a trans-Tasman patent attorney must be 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 Regulation website.

Accredited courses of study

A number of academic institutions offer courses of study that are accredited by the TTIPAB. Evidence of completing these courses may be submitted as part of the knowledge requirements for patent attorney registration.

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 Regulation website.

Eligibility requirements — Trans-Tasman IP Attorneys Regulation

New Zealand applicants may undertake Australian accredited courses of study to qualify for registration. Some institutions provide their courses through remote learning.

Renewal of trans-Tasman IP Attorny registration

In order to remain registered, patent attorneys must renew their registration annually. This involves the following requirements:

paying an annual registration fee
providing evidence that the attorney has completed at least 10 hours of continuing professional education over the previous 12 months.

Failure to complete these required hours of continuing professional education may result in a registration being suspended by the Designated Manager. More information on continuing professional education requirements may be found on the Trans-Tasman IP Attorneys Regulation website.

Continuing professional education — Trans-Tasman IP Attorneys Regulation

Renewal schedule

Renewals are due on 1 July of each year. The TTIPAB 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, you must contact the TTIPAB to confirm your contact details.

Renewal fees must be paid by 31 July, or otherwise the attorney will be removed from the register.

If an attorney has been removed from the register due to non-payment of renewal fees, they can apply to be restored to the register. More details on requesting for restoration can be found on the Trans-Tasman IP Attorneys Regulation website.

Renew my registration — Trans-Tasman IP Attorneys Regulation

Attorneys can also voluntarily request to be temporarily removed from the register. If this is the case, they must apply for restoration within 3 years from the date that their name was removed, or otherwise their registration will lapse.