The New Zealand Institute
of Patent Attorneys, Inc
How to become a patent attorney
New Trans-Tasman Patent Attorney regime
In March 2013 Australia and New Zealand signed a Bilateral Arrangement for implementing the Trans-Tasman patent attorney regime ("the joint registration regime"). The joint registration regime provides a single system of accreditation, registration and professional regulation of patent attorneys in both countries.
Information setting out the background and purpose of the joint registration regime, and the bilateral agreement, can be found on the MBIE website.
The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act came into force on 24 February 2017, and amended the Patents Act 2013.
Students who have already passed one paper and wish to become trans-tasman patent attorneys
Transitional provisions for persons who have already passed a New Zealand Patent Attorney exam paper (refer Part IX of the Bilateral Agreement on MBIE website)
Any person who has passed at least one New Zealand exam paper under the old regime may continue sitting the New Zealand exams for a further 4 years (2017-2020). If all New Zealand exam papers are passed in this time, they will be considered as meeting all the knowledge requirements under the new joint registration regime.
Any person who passes all of the New Zealand exam papers during the 4 year transition period will still need to apply for registration under the joint registration regime, but will be exempt from needing to hold a tertiary qualification in an area of patentable subject matter. They will still need to meet all other criteria for registration as a Trans-Tasman Patent Attorney. This includes having at least two years patents-related work experience, and providing a statement of skill. These candidates must apply for registration to the Designated Manager within six months of receiving written notification that all relevant papers have been passed.
For some candidates, the six month time period could mean that they have insufficient time to complete the two year work experience requirements for the Statement of Skill needed to become a trans-Tasman patent attorney.
NZIPA and IPONZ have been discussing ways to help candidates with this issue, and have decided to offer candidates the option of requesting 'delayed written notification' of their exam results. This will provide candidates with more time to complete the work experience required for their Statement of Skill.
Process for requesting 'delayed written notification'
· The Exam Board will notify all candidates this year (2017) by email of the option of requesting 'delayed written notification' of their final exam results, and setting out the process for doing so.
· In future years, the Exam Board will only contact any potentially affected candidates after the exams have occurred in July asking whether they would like delayed written notification of their results.
· Candidates wishing to have delayed notification of their final exam results must notify the Exam Board in writing, and must state the approximate date on which they wish to receive the delayed written notification. It is unlikely that extensions of more than two years will be accepted.
· The Exam Board will keep a record of:
o Any emails to potentially affected candidates;
o Any advice received from candidates that they want delayed written notification of their final exam results; and
o The date they wish to receive delayed notification in writing of their results; and
o A record of when candidates were sent written notification of their exam results.
New exam results notification procedure (for all candidates)
· The Exam Board will check whether a candidate has requested delayed notification before releasing the exam results.
· If the candidate has not requested delayed notification, their results for that year will be released in the normal manner. If they have completed all their papers, they will also be sent a transcript of their results which can be used to apply to the Designated Manager for registration as a trans-Tasman Patent Attorney. Under the transitional provisions, the application must be submitted to the Designated Manager within six months from receiving the written transcript of exam results.
· If the candidate has requested delayed notification, but has not passed all their papers that year, their results will be released in the normal manner (by email and letter).
· If the candidate has requested delayed notification, and has passed all their remaining papers, the Exam Board will verbally advise them of their results, and confirm the date they would like their transcript to be sent (the delayed written notification that all papers have been passed). The Exam Board will check with them again before sending the transcript.
All requirements relating to registering as a patent attorney under the transitional provisions must be completed by 24 February 2021.
If you have any questions about the new procedure, or wish to request a delayed notification please email the Exam Board at email@example.com.
Students who have already passed one paper and wish to become Australian trade mark attorneys
Transitional students who do not have patents work experience may have a path to registration as an Australian trade mark attorney.
The TTIPAB is open to using its inherent discretion regarding whether a transitional applicant who completes the patent attorney exams and has relevant trade marks-related work experience can be considered to have met the prescribed knowledge requirements for registration as a trade marks attorney in Australia.
The TTIPAB's function in the trade mark attorney registration regime is to certify to the Designated Manager that the student meets the prescribed knowledge requirement for registration. Because the TTIPAB's discretion only applies on a case-by-case basis, it is unable to give any broad assurance/guarantee that all transitional students will be registered as an Australian trade marks attorney on completion of the patent attorney exams. Applicants would need to provide the board with a satisfactory Statement of Skill in respect of their trade marks-related work experience.
This is a step forward in the right direction for some transitional students to receive a benefit from completing the patent attorney exams. What this means is that for those trade mark students currently caught by the transitional provisions you can continue with your New Zealand patent attorney exams during the next four years. If you pass them, then you can apply to become an Australian trade mark attorney. If you have sufficient trade marks-related work experience, that may be sufficient for the TTIPAB to exercise its discretion and register you as an Australian trade mark attorney.
Information on the transitional provisions, and how to become a registered trans-Tasman Patent Attorney, can be found on the trans-Tasman IP Attorney Board website.
For the avoidance of doubt, the Commissioner will not allow any person to sit New Zealand Patent Attorney exams in 2017 or subsequent years unless they have already passed at least one exam paper at the end of 2016.
The NZIPA Exam Board and IPONZ wish to advise that patent attorney exam enrolments will be open from 15 January to 1 February 2018. Eligible students must send their enrolments to IPONZ before 1 February 2018.
As the number of students reduces during the transition phase, the Exam Board wish to avoid putting resource into preparing a paper which is not needed.
Students who have not passed any papers
Any person who has not passed any NZ patent attorney examinations by the end of 2016 will be unable to enrol in any future New Zealand patent attorney examinations. They can only become registered as a Trans-Tasman patent attorney by completing the requirements for registration under the new Trans-Tasman patent attorney regime.
Full information on the new Trans-Tasman patent attorney regime, and the procedure and requirements for registration under it, may be obtained on the website of the Trans-Tasman IP Attorney Board. This website provides all necessary information about accredited courses of study for qualification as a Trans-Tasman patent attorney.
Victoria University of Wellington has Trans-Tasman IP Attorney Board accreditation to offer four courses of study in 2018:
New Zealand and Australian Intellectual Property Law - Topic Group A2 - Overview of IP (LAWS 551)
Trade Mark and Unfair Competition Law - Topic Group C - Trade Mark Law (LAWS 536)
Patent Law - Topic Group E - Patent Law (LAWS 537)
New Zealand and Australian Copyright and Designs Law - Topic Group I - Designs Law (LAWS 530)
Details of those courses are available from Victoria University of Wellington or in the attached flyer.
Students can meet the knowledge requirements by passing papers at more than one university. It is the mastery of the knowledge of IP law and practice that is important - not a particular university degree or diploma.
Exemptions for Topic Group B (Professional Conduct) are available to students holding a New Zealand Law Society Practising Certificate, and students who have been admitted to practice law in New Zealand in the 7 years prior to their application.
- Registration as a patent attorney requires substantial periods of practical experience under the supervision of a registered patent attorney.
- To register as a Trans-Tasman patent attorney, a candidate also needs a tertiary qualification in an area of patentable subject matter.
New Zealand law does not have any provision for registration of trade mark attorneys and we currently believe that there are no plans for our government to provide for them at present.