IP Reform - Incorporation and Serious Offence Notifications
12 Apr 2013
With the introduction of the IP Law Reform Amendment (Raising the Bar) Act 2012 changes relating to IP professionals have been made. The information below has been developed to help you to understand the changes and how they may affect the way you do business with us.
Two of the changes made see the introduction of;
- Companies being able to apply for registration as an incorporated patent attorney or incorporated trade marks attorney.
- Registered patent attorneys and registered trade marks attorneys will be required to notify the Designated Manager in writing if they are charged with a serious offence.
Go directly to information on incorporation
Go directly to information on serious offence notifications
Incorporation
Prior to the Raising the Bar IP reform the Designated Manager could only register individuals as patent attorneys or trade marks attorneys. Companies are now capable of being registered as patent and/or trade marks attorneys in Australia.
Companies wishing to register as incorporated patent or trade marks attorneys can apply for registration by submitting the appropriate form and paying an application fee of $300 (this fee is payable at the time the registration form is submitted). An annual fee of $350 is required thereafter to maintain the registration.
To be suitable to register as an incorporated attorney, the company must meet all of the following criteria:
- be a company registered under the Corporations Act 2001
- be able to provide evidence of company incorporation
- have at least one patent or trade marks attorney as a director of the company; and
- possess professional indemnity insurance.
To register as an incorporated patent or trade marks attorney follow the below steps:
1. Go to the Publications section on the Professional Standards Board Website
2. Download the appropriate form in the Forms area
3. Complete the form and collate the relevant supporting documentation:
a. proof of adequate and appropriate professional indemnity insurance (such as a Certificate of Currency)
b. evidence of prior incorporation of the company (such as an ASIC Certificate of Registration)
c. provide the name(s) of the patent or trade marks attorney director of the company
4. Submit the form to the PSB at:
The Secretary
Professional Standards Board for Patent and Trade Marks Attorneys
PO Box 200
Woden ACT 2606Or
5. The PSB secretariat will process the request for registration. The Designated manager will then register the incorporated patent and/or trade marks attorney
6. A Certificate of Registration will be issued to the incorporated patent or trade marks attorney if the registration is accepted
Serious Offence Notifications
As defined in Schedule 4 s20.1(1) of the IP Legislation Amendment (Raising the Bar) Regulation 2013 a notification to the Designated Manager regarding serious offences must be done within 14 days of being charged with a serious offence. A serious offence is defined in the regulations as an offence that:
(a) involves obtaining property or a financial advantage by deception or fraudulent conduct; and
(b) is either:
i. an indictable offence against a law of the Commonwealth, a State or a Territory (whether or not the offence may be dealt with summarily); or
ii. an offence against a law of a foreign country that would be an indictable offence against a law of the Commonwealth, a State or a Territory if committed in Australia (whether or not the offence could be dealt with summarily if committed in Australia).
If the registered attorney fails to notify the Designated Manager of being charged with a serious offence and does not have a reasonable excuse for failing to comply, the failure to comply constitutes unsatisfactory professional conduct on behalf of the attorney.
To notify the Designated Manager of a serious offence the following procedure will be followed when an attorney is charged with a serious offence
1. The charged attorney, within 14 days of being charged with a serious offence, writes to the Designated Manager (there is no form to fill in) to report the charge.
The Designated Manager
Professional Standards Board for Patent and Trade Marks Attorneys
PO Box 200
Woden ACT 2606
2. The Designated Manager will review the case and will either:
a. by written notice to the attorney, suspend the attorney's registration from the date of when the notice is given to the attorney; or
b. by written notice to the attorney advise that the registration will not be suspended.
If a suspended attorney intends to contest the Designated Manager's ruling then the attorney has 28 days after the date of the notice, to show why the suspension should be lifted.
The Designated Manager can end the suspension in certain circumstances, for example if the charge relating to the serious offence is not proceeded with.
What are the benefits of these changes?
Attorneys will have a wider choice of business models open to them for the running of their practices and this will bring them into line with options available to other professions such as, and in particular, the legal profession.
The public will be protected by knowing that incorporated patent and/or trade marks attorneys will have adequate and appropriate professional indemnity insurance.
The public will be immediately protected in the situation where an attorney has been charged with a serious offence but the matter has not been heard by the patent and trade marks attorney disciplinary tribunal. The Designated Manager has the option of suspending a person charged with a serious offence until the matter is finalised.
Frequently Asked Questions?
Where is the form to register as an incorporated patent or trade marks attorney?
In the Publications section on the PSB website you can download the respective 'Registration as an Incorporated Attorney' form in the Forms area.
How much professional indemnity insurance do we need to incorporate?
The regulations state that the professional indemnity insurance has to be 'adequate and appropriate'. In general, the amount will be assessed by the insurer based on gross fees, type of work and other circumstances. There is no formula or no set amount that The Designated Manager requires, a Certificate of Currency supplied to the company by the insurer is adequate proof to IP Australia that the requirement is met.
Should a sole practitioner apply for incorporation as an attorney?
The decision to become an incorporated attorney is entirely up to you as the legislative changes do not require attorneys to incorporate. The change to allow incorporation is to provide greater flexibility and further options in business models. IP Australia and the Professional Standards Board recommend that appropriate legal and business advice should be sought prior to making a decision to incorporate.
How much does the process of becoming incorporated cost?
The fee for a company to apply to become an incorporated patent and/or trade marks attorney is $300 and is payable to IP Australia. This is application fee is separate to the cost for registering a company with ASIC. A yearly renewal of fee of $350 is then required to be paid to IP Australia to maintain the registration.
Do incorporated patent or trade marks attorneys have any other requirements - e.g. special Continuing Professional Education (CPE)?
Requirements (such as CPE) do not apply to incorporated patent and/or trade marks attorneys. The existing requirements for individual attorneys to maintain their attorney registration will still apply, regardless of whether they are employed as part of an incorporated patent and/or trade marks attorney practice.
Where can I read the regulations related to this subject?
Schedule 4 'Amendments relating to IP professionals' can be accessed on the ComLaw website for Schedule 4 of the IP Legislation Amendment (Raising the Bar) Regulation 2013.
Last Updated: 12/4/2013
