Regulations affecting patent and trademark attorneys amended
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Several amendments to regulations which affect patent and trademark attorneys currently registered in Australia (and those who wish to become registered in Australia) came into force on July 1 2008. These amendments are to be found in Chapter 20 of the Patent Regulations 1991 (Cth) and Part 20 of the Trademarks Regulations 1995 (Cth).
The key changes relate to:
- the introduction of continuing professional education (CPE);
- amendments to pre-registration employment requirements for those seeking registration as a patent attorney; and
- amendments to disciplinary proceedings.
With regard to the first key change, all Australian attorneys must now undertake continuing professional development activities to renew their annual registration. A minimum of 10 hours of CPE must be completed each year; jointly registered (patent and trademarks) attorneys must complete 15 hours. CPE relating to other areas (eg, general legal matters and technology matters) can be credited, but the activity must be relevant to the patent/trademark profession.
Where an attorney is registered for the first time during the year, the requirement to undertake CPE will not commence until the first full year of registration.
It is the responsibility of each attorney to determine which activities are best suited to his or her practice. The activities do not have to be pre-approved or accredited by the Professional Standards Board for Patent and Trademarks Attorneys, but must be relevant to the delivery of services to clients and in addition to an attorney's regular work. In this respect, the board provided some guidelines on its website - examples include conferences, workshops, lectures, formal study programmes, in-house training, writing articles, service on technical committees and private study.
Attorneys must maintain records of their activities and should keep a diary outlining the nature, duration and date of the activity together with copies of receipts and any relevant documents. These records must be kept for three years. The board will conduct formal random audits of attorneys from 2011; however, a trial audit (without penalty) will be phased in over the next three years, commencing in 2009.
With regard to the second key amendment, in the past a person seeking registration as a patent attorney needed to have a qualification in a field of science or technology that contains potentially patentable matter. To become registered as a patent attorney, it will now be necessary to satisfy the following pre-registration employment requirements:
- Applicants must provide a statement of skill from a patent attorney who has been registered for at least five years which indicates that:
- the applicant has been employed and gained the requisite skills for two continuous years, or a total of two years within five continuous years; and
- the skills were acquired doing patent attorney work in Australia under the supervision of a registered attorney of five years.
- If it is not possible to obtain a statement of skill from a registered patent attorney of five years, it is possible to apply to the board with evidence of relevant skills. If satisfied that the applicant has the requisite skills, the board will issue of a statement of skill to the applicant.
There is a one-year transitional period in relation to these employment requirements.
With regard to the third key change, the board will now be solely responsible for investigating and prosecuting complaints against registered attorneys. If it is determined that an attorney has breached the Code of Conduct for Patent and Trademarks Attorneys, the board will prosecute the case before the Disciplinary Tribunal for Patent and Trademarks Attorneys.
The board will also be able to receive complaints about an attorney from any source, including:
- a client;
- another attorney;
- the board itself; and
- published information.
In addition, the definitions of 'misconduct' under the regulations have been amended. This brings them into line with definitions and standards used by the legal profession. The key definitions are 'professional misconduct' and 'unsatisfactory professional conduct', and their overall effect is to raise the threshold of misconduct under the code.
Lara Townsend Gun, Allens Arthur Robinson, Sydney
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