IP/N/1/AUS/P/7  
IP/N/1/AUS/T/8  
 
18 June 2013  
(13-3163)  Page: 1/52  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
 
AUSTRALIA  
This document reproduces the text1 of the Patents and Trade Marks Legislation Amendment 
Regulations 2008 (No. 1), as notified by Australia on 22 May 2013 under Article 63.2 of the Agreement (see document IP/N/1/AUS/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
AUSTRALIE  
Le présent document contient le texte1 du Règlement de 2008 portant modification de la législation 
relative aux brevets et aux marques (n° 1), notifié par l'Australie le 22 mai 2013 au titre de l'article 63:2 de l'Accord (voir le document IP/N/1/AUS/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
AUSTRALIA  
En el presente documento se reproduce el texto1 del Reglamento de 2008 que modifica la 
legislación relativa a las patentes y marcas de fábrica o de comercio (Nº 1), notificado por 
Australia el 22 de mayo de 2013 en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento IP/N/1/AUS/5). 
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/P/7 • IP/N/1/AUS/T/8 
 
- 2 - 
 
  PP 3-52 - Offset (Pdf file attached) 
PP 3 à -52 - Offset (fichier Pdf joint) PP 3-52 - Offset (fichero Pdf adjunto)   
 
0711491A-080605EV.doc 
 
Patents and Trade Marks 
Legislation Amendment 
Regulations 2008 (No. 1)1 
Select Legislative In strument 2008 No. 122 
I, PHILIP MICHAEL JEFFERY, Governor-General of the 
Commonwealth of Australia, acting with the advice of the 
Federal Executive Council, make  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, Indus try, Science and Research 
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Page 
 
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Regulations 2008 (No. 1) 2008, 122 
 
 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 
 
 
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  (b) a disciplinary proceeding commenced on or after 1 July 
2008. 
 (2) For paragraph (1) (b), disciplinary proceedings are taken to 
have commenced on or before 30 June 2008 if, on or before 
that date, the Board has given written authority to a 
complainant to bring proceedings against a registered patent 
attorney. 
 (3) If, on or before 30 June 2008: 
 (a) a person has been granted an exemption 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 exempted, 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 employment 
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 regi stration as a patent attorney; 
the person is taken to meet the employment requirements. 
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 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 following 
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 immediately 
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 meaning 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 more 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 regist ration 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 material mentioned in 
regulation 20.3; and 
 (c) be accompanied by the fee mentioned in item 104 of 
Schedule 7. 
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 20.3 Evidence that applicant meets registration 
requirements 
 (1) An application for registration as a patent attorney must be 
accompanied by the following: 
 (a) evidence that the applican t is ordinarily resident in 
Australia; 
 (b) evidence that the Board is satisfied that the applicant 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 applicant has 
the knowledge of intellectual property law and practice 
that is required for a person to practice as a patent attorney; 
 (d) one or more statements of skill, for the purposes of 
regulation 20.11; 
 (e) a statutory declaration, by th e applicant, that he or she: 
 (i) has not, in the 5 years preceding the application, 
committed an offence 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 Manager must give the person a 
certificate of registration. 
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 20.5 Evidence of academic qualifications 
 (1) The Board must be satisfied 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 pers on 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 whet her or not it is 
satisfied that the person has th e 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 must not approve an applicant for 
registration as a patent  attorney unless the a pplicant has, or is 
entitled to: 
 (a) an AQF qualification from th e higher education sector that 
the Board is satisfied is an appropriate qual ification for a 
patent attorney; or 
 (b) a qualification awarded by an  overseas institution that the 
Board is satisfied is equivalent to an AQF qualification 
from the higher education sector. 
 (2) The Board must not be satisfied that a person has 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 appr opriate 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 appr opriate 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 the a pplicant has the relevant 
knowledge; and 
 (ii) the original or a certified copy of any academic 
record that shows the study that contributes to the 
knowledge. 
 (2) The Board must, within 42 days of deciding whet her or not it is 
satisfied that the person has th e 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 must 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 must, in 
satisfying itself whether or not  an applicant has the knowledge 
of intellectual property law and practice that is required for a 
person to practice as a patent attorney, take into account 
whether the applicant has the knowledge requirements that 
meet the minimum requirements set out in Schedule 5. 
 (3) The Board may publish guide lines setting out criteria for 
deciding whether or not ar eas 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 may be satisfied that 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 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 gr anted an exemption under regulation 
20.9, the applicant is taken to  meet the requirement 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 patent 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 re quirement in Schedule 5 
 (1) The Board may exempt an appl icant 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 Bo ard enough information for the 
Board to be satisfied und er 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 exemp tion under subregulation (1) if it 
is satisfied that the applicant has successfully completed a relevant course of study within the 7 years preceding the application or within a longer pe riod specified in writing by the 
Board. 
 (4) An exemption under subregulati on (1) is valid for 5 years from 
the date that the exemption was granted or for a longer period 
specified in writing by the Board. 
20.10 Employment requirements 
 (1) The applicant: 
 (a) must have been employed in a position, or positions, that 
provided the applicant experien ce 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 pate nt specifications; 
 (v) providing advice on the interpretation, validity and 
infringement of patents; and 
 (b) must have been employed in a position, 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) must be 
evidenced by means of one or more 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 patent attorney a person who satisfies certain conditions. 
Paragraph 198 (4) (c) requires that a person 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 registered patent a ttorney, the applicant has the 
experience mentioned in one or more 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 requireme nts mentioned in paragraph 
20.10 (1) (b). 
 (3) If an applicant is unable to obtain a statement of skill from a 
registered patent attorney who has 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 prescribed offence for 
paragraph 198 (4) (e) of the Act. 
 (2) An offence of dishonesty for which the maximum penalty is 
imprisonment for at least 2 year s 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 patent attorney a person who satisfies certain conditions. 
Paragraph 198 (4) (e) requires that a pe rson not have been convicted of a 
prescribed offence during the previous 5 years. Paragraph 198 (4) (f) requires that a person not be u nder 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 provided by 
an institution if the Board is satisfied that the learning 
outcomes of the course would re sult in a person who passes the 
course acquiring some or all of the knowledge of intellectual 
property law and practice that the Board considers necessary for a person to practice as a registered patent attorney. 
 (2) In deciding whether or not to accredit the course, the Board 
must consider whether the learning outcomes of the course meet some or all of the requi rements set out in Schedule 5. 
 (3) In considering whether the learning outcomes of the course 
meets some or all of the requirements set out in Schedule 5, the Board must consider any information provided by the 
institution.  
 (4) If the institution gives the Board sufficient information for the 
Board to decide whether the learning outcomes of the course meet a requirement mentioned in Schedule 5, the Board must, 
within 4 months after receiving the information, decide whether to accredit the course. 
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  (5) Subject to subregulation (7), if the Board accredits a course, 
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 requirements 
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 requiremen t mentioned in Schedule 5; 
and  
 (c) either: 
 (i) the Board does not expect to complete 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 academic 
semester starts. 
 (2) The Board may provisionally accredit a change d course if:  
 (a) a consequence of the change to the course is that the 
learning outcomes of the course may meet fewer of the 
requirements set out in Schedule 5; and 
 (b) the Board considers that the changed course still achieves 
the learning outcomes 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 the course is made 
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 may appoint examiners for the purposes of the 
examinations, and give them inst ructions about the setting and 
marking of papers. 
 (3) An examiner is entitled to be paid the fees that the Minister 
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 admission to sit for each 
examination it holds. 
 (2) Subregulation (1) does not apply to a supplementary 
examination under regulation 20.21. 
20.17 Examinable subject matter   From time to time, the Boar d must arrange to publish in the 
Official Journal particulars of: 
 (a) the subject matter 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 material it recommends to 
candidates. 
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 20.18 Admission to sit fo r a Board examination 
  An application by a person to sit for an examination 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 must give to each candidate who sat for the 
examination his or her re sults 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 examiner appointed under 
subregulation 20.15 (2). 
20.21 Supplementary Board examination 
 (1) An application by a pers on to sit for a supplementary 
examination must be in the form approved by the Board. 
 (2) The Board may let a candidate sit for a supplementary 
examination if: 
 (a) the candidate: 
 (i) failed an examination; and   (ii) applies to the Board to sit for the supplementary 
examination within 1 month of being told of the 
failure; or 
 (b) the candidate: 
 (i) did not sit for the examin ation because of illness or 
another reason that the Board reasonably considers 
sufficient; and  
 (ii) applies to the Board to sit for the supplementary 
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 examiner’s comments on the candidate’s 
performance. 
 (4) A supplementary application under paragraph (2) (b) must be 
accompanied by evidence of the reason for failing to sit the examination that was obtained at the time of the illness or of 
the occurrence of the other ev ent 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 registered 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 registered  patent attorney to whom 
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 immediately before the date on which the 
attorney applies for renewed registration, have completed 
10 hours of activities th at the Designated Manager is satisfied 
are appropriate for an attorney  to undertake as a means of 
maintaining the currency of his or her professional qualifications. 
 (2) The Board may 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 means of maintaining the 
currency of his or her professional qualifications. 
 (3) A person who is both a registered patent attorney and a 
registered trade marks attorney must, in the 12 months immediately before the date on which the attorney applies for 
renewed registration, have comple ted 15 hours of activities that 
the Designated Manager is satisfied are appropriate for an attorney to undertake as a means of maintaining the currency of 
his or her professi onal qualifications. 
 (4) In this regulation: 
renewed registration  means an application by a registered 
patent attorney to renew his or her registration, other than the 
first application to renew his or her registration. 
20.25 Method of demonstr ating 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 Manage r a written statement made by 
the attorney that states th at the attorney has met the 
requirements of this Part; and 
 (b) have kept written record s in relation to each continuing 
professional education activity on which the attorney relies. 
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  (2) For paragraph (1) (b), the records must: 
 (a) enable an assessment of th e activity to confirm 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 a nnual registration fee 
  If a registered patent a ttorney does not pay the annual 
registration fee by 31 July in the year in which the fee is 
payable, the Designated Manager must: 
 (a) remove the name 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 registered patent atto rney fails to comply with the 
requirements applicable to th e attorney under subregulation 
20.25 (1) or (2), the Designated Manager may remove the 
attorney’s name from the Regi ster for a period not exceeding 
6 months. 
 (2) If a registered patent atto rney, without reasonable excuse: 
 (a) provides a written statem ent under paragraph 20.25 (1) (a) 
that is false in a material particular; or 
 (b) fails to produce written r ecords of his or her continuing 
professional education activ ities in accordance with a 
request under paragraph  20.25 (2) (b); 
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 the Designated Manager must remove the attorney’s name 
from the Register. 
 (3) If the Designated Manager removes the name of a registered 
patent attorney from the Regist er under subregulation (2), the 
name of the attorney must not be returned to the Register 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 removed 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 must rest ore the attorney’s name to 
the Register. 
 (2) A request under paragraph (1) (b) must be made no more than 
3 years after the removal of the attorney’s name from the 
Register. 
 (3) The Designated Manager may, in restoring the name of a 
registered patent attorney to the Register, impose a condition that, before 1 July of the following registration year, the 
registered patent attorney mu st undertake such continuing 
professional education activitie s as the Designated 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 comply 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 within 
such further period as the Designated Manager reasonably 
allows, the attorney: 
 (i) pays the fee mentioned 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, may apply to 
the Designated Manager to have hi s or her name restored to the 
Register. 
 (2) An application under subsection (1) must be in a form 
approved by the Designated Manager. 
 (3) An application under subsecti on (1) must be accompanied by 
the following: 
 (a) evidence that the Board is satisfied with the currency of 
the person’s knowledge of inte llectual property law and 
practice; 
 (b) a statutory declaration, by th e applicant, that he or she: 
 (i) has not, in the 5 years preceding the application, 
committed an offence 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 ti tled ‘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 profession al conduct that involves a 
substantial or consistent failure to reach reasonable 
standards of competence and diligence; or 
 (b) any other conduct, whether occurring in connection with 
practice as an attorney or otherwise, that shows 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 standard of competence, diligence and 
behaviour that a member of the pu blic is entitled to expect of 
an attorney. 
20.33 Role of Board in disciplinary proceedings 
 (1) The Board has the sole responsibility for commencing 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 a ttorney has been engaged in: 
 (i) professional misconduct; or 
 (ii) unsatisfactory professional conduct; or 
 (b) at the time of his or her registration, a registered patent 
attorney did not hold either  or both of the following: 
 (i) the academic qualifications mentioned 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 pro ceedings 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 against a registered 
patent attorney before the Discip linary Tribunal if the Board is 
satisfied that there is a reas onable likelihood of the attorney 
being found guilty of an offence under subregulation (2), other 
than of unsatisfactory professional conduct. 
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  (5) In deciding whether or not to commence 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 attorney bei ng found guilty of an offence 
under subregulation (2). 
 (6) In deciding whether or not a re gistered patent a ttorney has been 
engaged in: 
 (a) professional misconduct; or 
 (b) unsatisfactory professional conduct; 
the Board must consider whether 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 informati on requested by the Board under 
subregulation (1) is unsatis factory 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 may determine 
its procedure. 
 (2) Proceedings before the Di sciplinary Tribunal are to be 
conducted quickly and informally, while allowing for proper 
consideration of the matte r 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, may administer an oath or 
affirmation. 
20.37 Notification of hearing of disciplinary proceedings 
 (1) The Disciplinary Tribunal must, as soon as practicable after 
receiving a notice under regulation 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 must, as soon as practicable after 
fixing a time and date for the hearing of charges against a 
registered patent attorney, notif y 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 Disciplinary Tribunal is reasonably satisfied that it is 
desirable to do so, in the public  interest or because of the 
confidential nature of any evid ence or matter, the Tribunal 
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 pe rsons 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 documents lodged with the 
Tribunal or received in evidence by it. 
 (3) A person must comply 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 Tribunal, 
a party to the proceedings may appear in person or be 
represented by a le gal practitioner. 
 (2) The Disciplinary Tribunal may 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 against 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 documents or articles mentioned in the 
summons; or 
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  (b) summon the attorney to appear before the Tribunal: 
 (i) to produce any documents or articles mentioned in 
the summons; and 
 (ii) to give evidence to  identify the documents 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 be fore 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 defence to a prosecution for an offence against 
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 circumstance that the Disciplinary 
Tribunal reasonably considers is an impediment 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 evidential 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 witness before the Disciplinary 
Tribunal; and  
 (iii) has been paid expenses and allowances; and  
 (b) the expenses and allowances have been determined by the 
Tribunal in accordance with Pa rt 2 of Schedule 8; and 
 (c) the person refuses:  (i) to be sworn or ma ke 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 element of an offence 
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 registered patent attorney against whom proceedings 
have been instituted; and 
 (b) is summoned to appear  at a hearing before the 
Disciplinary Tribunal in resp ect 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 document or 
article, if the answer to the question, or the document or article, 
may tend to prove that he or she has committed an offence 
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 performance of the 
functions of that Tribunal under this Part, the same 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 immu nity as a Justice of the High 
Court. 
 (3) A legal practitioner or other person appearing before the 
Disciplinary Tribunal has the sa me 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 atte nd 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 pa tent attorney, it may find the 
attorney guilty of professional misconduct. 
 (2) If the Disciplinary Tr ibunal has heard a charge of 
unsatisfactory professional conduc t against a registered patent 
attorney, it may find the atto rney guilty of unsatisfactory 
professional conduct. 
 (3) If the Disciplinary Tribunal ha s heard a charge that a registered 
patent attorney was unqualified at the time of his or her 
registration, that Tribunal may fi nd the attorney guilty of being 
unqualified at the time of registration.  
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  (4) If the Disciplinary Tribunal ha s 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 has been lifted or the period 
of suspension has elapsed. 
 (3) Without limiting subregulation (2), the conditions 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 time, 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 registered patent attorney is also a registered 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 attorney guilty of 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 conditions 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 time, 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 registration and finds the charge proved, 
that Tribunal may: 
 (a) if the attorney has, since that time, obtained that 
qualification or the qualification is no longer required for registration — reprimand the attorney; or 
 (b) in any other case — cance l his or her registration. 
20.47 Finding that registra tion 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 c onsidered in determining 
penalties 
  In deciding what to do about a registered patent attorney under 
regulation 20.44 or 20.45, the Disciplinary Tribunal may 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 Disci plinary Tribunal 
 (1) If the Disciplinary Tribunal reprimands a registered patent 
attorney, or suspends or cancels the attorney’s registration, the 
Tribunal must give a written notice of the finding 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 must note the suspension and its 
duration in the Register of Patent Attorneys. 
 (3) If the registration of a registered 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 making a 
decision under regulation 20.44, 20.45, 20.46 or 20.47: 
 (a) prepare a written statement that:  
 (i) sets out the decisi on of the Tribunal; and  
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  (ii) sets out the reasons  for the decision; and  
 (iii) sets out the findings on any material questions of 
fact; and  
 (iv) refers to evidence or other material 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 statement that 
sets out the decision of the Tribunal; and 
 (d) arrange for the publicati on of a copy of the statement 
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 Disc iplinary Tribunal may appoint 
a registered patent attorney to carry on the practice of the 
former attorney until all outst anding matters are disposed of. 
 (2) If the registration of the 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 former attorney for the period of the suspension or for a specified period, 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 registered 
patent attorney consents to the appointment. 
 (4) This regulation does not allow a registered patent attorney to 
act as a registered patent attorn ey 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 former attorney may 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 may 
reasonably require; or 
 (b) any books, accounts or other documents concerning the 
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 who 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 defence to a prosecution for an offence against 
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 circumstance th at the Disciplinary Tribunal 
reasonably considers is an impediment 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 attorney has the same 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 of 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 may 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 a ffect 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 benefit of a law for the relief of 
bankrupt or insolvent debtors; or 
 (h) has entered into a debt agreement under Part IX of the 
Bankruptcy Act 1966 ; or 
 (i) compounds with his or her creditors or assigns his or her 
salary and allowances for their benefit. 
 (3) The Minister may remove a member 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 member of the 
Board; or 
 (d) has behaved in an offensive or disorderly way, or in a way 
that is likely to adversely a ffect 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 benefit of a law for the relief of 
bankrupt or insolvent debtors; or 
 (h) has entered into a debt agreement under Part IX of the 
Bankruptcy Act 1966 ; or 
 (i) compounds with his or her creditors or assigns his or her 
salary and allowances for their benefit. 
20.57 Meetings of Board 
 (1) The Board must hold as many m eetings 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 meeting of the Board at the time 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 members present at the 
meeting to preside. 
 (3) The Chairperson or a member who presides at a meeting 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 quor um 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 absent from a meeting of the Board, the 
members present must 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 instrument of appointment must be published in 
the Official Journal . 
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  (3) A person so appointed holds the office for the period specified 
in the instrument. 
 (4) A person so appointed may resign in writing given to the 
Minister. 
 (5) The Minister may 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, compounds 
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 conflict 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 vacancy 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, or 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 during a vacancy must not continue 
to act for more than 12 months. 
 (3) A copy of the instrument 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 conflict of 
interest in accordan ce 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 irregularity 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 Discip linary 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 perform his or her functions 
because of a conflict of intere st, 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 instrument of appointment must be published in 
the Official Journal . 
 (4) A person so appointed may ex ercise 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) unle ss 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 academic 
qualifications’); 
 (ii) regulation 20.7 (‘evidence of knowledge 
requirements’); or 
 (c) the Designated Manager unde r the following provisions:  
 (i) regulation 20.28 (‘failure to comply with continuing 
professional education requirements’); 
 (ii) regulation 20.29 (‘restoring attorney’s name to 
Register’); 
 (iii) regulation 20.30 (‘restor ing attorney’s name to 
Register following payment of unpaid fee’); 
 (iv) regulation 20.31 (‘return ing to Register in other 
circumstances’); or 
 (d) the Disciplinary Tribun al 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 (‘pen alties — unsatisfactory 
professional conduct’); 
 (iv) regulation 20.46 (‘fin ding 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 must provi de for a student to have an 
appropriate level of: 
 (a) knowledge and practical appl ication so that the student 
can give advice about applicab le categories of protection 
for particular activities; and  
 (b) appreciation of the advantages of each form of protection 
for a client; and  
 (c) understanding of how to get and maintain 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 must provi de 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 must provi de 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 must provi de 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 must provi de for a student to have an 
appropriate level of understandi ng of the system of protecting 
and exploiting trade marks, patents and designs, both in 
Australia and other coun tries. 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 
20.31 160 
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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 material mentioned in 
regulation 20.3; and 
 (c) be accompanied by the fee mentioned in item 28 of 
Schedule 9. 
20.3 Evidence that applicant meets registration 
requirements 
 (1) An application for registration as a trade marks attorney must 
be accompanied by the following: 
 (a) evidence that the Board is satisfied that the applicant 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 applicant has 
the knowledge of intellectual property law and practice 
that is required for a person to practice as a trade marks 
attorney; 
 (c) a statutory declaration, by th e applicant, that he or she: 
 (i) has not, in the 5 years preceding the application, 
committed an offence 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 marks 
attorney, the Designated Manager must give the person a 
certificate of registration. 
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 20.5 Evidence of academic qualifications 
 (1) The Board must be satisfied 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 pers on 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 whet her or not it is 
satisfied that the person has th e qualification, not ify 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 must not approve an applicant for 
registration as a trade marks a ttorney 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 satisfied is equivalent to an AQF qualification 
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 the a pplicant has the relevant 
knowledge; and 
 (ii) the original or a certified copy of any academic 
record that shows the study that contributes to the 
knowledge. 
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  (2) The Board must, within 42 days of deciding whet her or not it is 
satisfied that the person has th e 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 must not approve an applicant for 
registration as a trade marks 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 must, in 
satisfying itself whether or not  an applicant has the knowledge 
of intellectual property law and practice that is required for a person to practice as a trade mark s 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 marks 
attorney as modified by regulation 20.11 of these Regulations. 
 (3) The Board may publish guide lines setting out criteria for 
deciding whether or not areas of study: 
 (a) are likely to meet the minimum 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 may be satisfied that 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 meet 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 gr anted an exemption under regulation 
20.9, the applicant is taken to  meet the requirement in 
Schedule 5 to the Patents Regulations 1991 for which the 
exemption is granted. 
Note   Subsection 228A (4) of the Act pr ovides that the Designated 
Manager must register as a trade ma rks attorney a person who satisfies 
certain conditions. Paragraph 228A (4) (a) 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 to 
Patents Regulations 
 (1) The Board may exempt an appl icant from having to satisfy all 
or some of the requirements me ntioned 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 Bo ard enough information for the 
Board to be satisfied und er 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 exemp tion under subregulation (1) if it 
is satisfied that the applicant has successfully completed a relevant course of study within the 5 years preceding the 
application or within a longer pe riod specified in writing by the 
Board. 
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  (4) An exemption under subregulati on (1) is valid for 5 years from 
the date that the exemption 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 maximum penalty is imprisonment for at least 
2 years is a prescribed offence.  
20.11 Application of Schedul e 5 to Patents Regulations  
  Schedule 5 to the Patents Regulations 1991 applies to 
obtaining registration as a trade marks attorney for the first time as if item 5 in Part 5 provided: 
 ‘5. A course of study must provi de 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 marks attorney under this Part as if 
references to ‘patent attorney’ were references to ‘trade marks 
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 Chapter 20 of the Patents Regulations 1991  
apply to a trade marks attorney in its application to the 
registration of a trade marks at torney under this Part as if: 
 (a) references to ‘patent attorney’ were references to ‘trade 
marks attorney’; and 
 (b) references to the ‘Register’ were references to the 
‘Register of Trade Marks Attorneys’; and 
 (c) references to ‘trade marks 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 re gulations 20.26 and 20.27 of the Patents 
Regulations 1991  to the ‘Register of Patent Attorneys’ 
were a reference to the ‘Register of Trade Marks Attorneys’; and 
 (f) the reference in regulations 20.29, 20.30 and 20.31 of the 
Patents Regulations 1991  to ‘item 107 of Schedule 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 ‘registered trade marks 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 Register of Trade Marks 
Attorneys’. 
Division 7 Rights of registered trade marks 
attorneys 
20.16 Lien 
  A registered trade marks attorney has the same 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 document 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 academic 
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 name to 
Register’); 
 (iii) regulation 20.30 (‘restor ing attorney’s name to 
Register following payment of unpaid fee’); 
 (iv) regulation 20.31 (‘returni ng to the Register in other 
circumstances’); or 
 (c) the Disciplinary Tribun al under the following provisions 
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 (‘pen alties — unsatisfactory 
professional conduct’); 
 (iv) regulation 20.46 (‘fin ding 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 
authorised by regulation 20.14 $160 
Note 
1. All legislative instruments and comp ilations are registered on the Federal 
Register of Legislative Instruments kept under the Legislative 
Instruments Act 2003 . See http://www.frli.gov.au . 
 
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