New Zealand Intellectual
Property Attorneys Inc

How to become a patent attorney


Introduction

As a profession, patent attorneys operate in the global arena and across all sectors of industry to assist New Zealand businesses in their key markets. Patent attorneys understand the need to be smart about intellectual property - protection is important, but commercialisation more so. They provide real support to New Zealand's innovators through identification and enhancement of ideas, protection and commercialisation.

Patent attorneys in New Zealand are a highly educated profession with many patent attorneys holding both a technical qualification and a law degree.

A qualified patent attorney in New Zealand has knowledge of all areas of intellectual property - not just patents. These areas of intellectual property include registered rights (as in the case of patents, designs, trade marks or plant variety rights) and unregistered rights (as in the case of copyright, trade secrets, goodwill and reputation).

Patent attorneys have many touch points with their clients which enable them to easily detect relevant, marketable and commercial ideas. As a result of their engagement, patent attorneys:

· Regularly visit New Zealand businesses to enable early identification of innovative ideas;

· Develop strategies to protect those ideas and innovations in key markets through varied intellectual property rights;

· Educate New Zealand businesses about the range and scope of those intellectual property rights both in New Zealand and overseas; and

· Are actively involved in the commercialisation of innovation by sitting at the negotiation table, drafting and reviewing related documents, and providing strategic, commercially relevant and pragmatic advice across a broad range of issues (including commercial issues, not just those that are IP related).

Most importantly, patent attorneys in New Zealand have a unique insight into how New Zealand business can (and should) use the intellectual property systems in New Zealand, Australia and further afield to maximise commercial advantage on the world stage.

If you are interested in a career as a patent attorney, we suggest that you contact a firm of attorneys in your area. Please view our member firms.

Registration Requirements

Full information on the 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 (the Board). This website provides all necessary information about accredited courses of study for qualification as a Trans-Tasman patent attorney.

Registration as a patent attorney requires an academic qualification, satisfaction of knowledge requirements, satisfaction of employment requirements, and a statement of skill.

Academic Qualifications

Patent attorneys require an academic qualification at level 5 or higher under the New Zealand Qualifications Framework (NZQF). You can find out more about the framework here.

The qualification needs to be in a field of technology that contains potentially patentable subject matter, such as science and engineering. The qualification is also required to involve a depth of study that is sufficient to provide an appropriate foundation for practice as a patent attorney.

The Board recommends that applicants seeking to be registered as a patent attorney have their academic qualifications formally approved by the Board before they embark on satisfying the knowledge requirements discussed below.

Knowledge Requirements

Applicants are required to undertake a course of study that covers nine topic groups. These nine topic groups are:

  • Legal process and overview of intellectual property
  • Professional conduct
  • Trade marks law
  • Trade marks practice
  • Patent law
  • Patent system
  • Drafting patent specifications
  • Interpretation and validity of patent specifications
  • Designs law.

Students can meet the knowledge requirements by passing papers at more than one accredited university. It is the mastery of the knowledge of IP law and practice that is important - not a particular university degree or diploma.

Meeting the knowledge requirements usually takes about three years and can typically be completed while working and gaining experience in the industry.

An exemption for the Professional Conduct topic group is available to students holding a New Zealand Law Society Practising Certificate, and to students who have been admitted to practice law in New Zealand in the 7 years prior to their application.

** December 2021 update: University of Auckland are now accredited to deliver the following courses and will be offering these papers in Semester 2 in 2022

Topic group(s)

Current accredited courses

A1: Legal Process and
A2: Overview of IP and
B: Professional Conduct       

Intellectual Property and Practice [LAWCOMM 772]*
(Accredited until 18 November 2026)
C: Trade Marks Law

 

Trade Marks and Related Rights [LAWCOMM 796]*
(Accredited until 18 November 2026)

Victoria University of Wellington will not be offering any accredited courses in 2022.

Some of our members have satisfied all of their knowledge requirements with courses offered by University of Technology Sydney (UTS). Others have completed some courses at Victoria University of Wellington (VUW) and the remaining courses at UTS. In some cases, it is possible to obtain a Master of Intellectual Property from UTS in addition to satisfying the knowledge requirements.

We have put together some qualification pathways that some of our members have followed in order to satisfy the knowledge requirements. You may wish to verify with the relevant Universities which of these pathways are available to you. You may view the qualification pathways here.

Employment Requirements

Registration as a patent attorney requires substantial periods of practical experience under the supervision of a registered patent attorney. In particular, an applicant must have been employed in a position or positions that provide experience in:

  • Searching patent records
  • Preparing, filing and prosecuting patent applications
  • Drafting patent specifications
  • Providing advice on the interpretation, validity and infringement of patents.

The applicant must also have been employed in the position or positions for at least two continuous years or a total of two years within five continuous years.

Statement of Skill

A statement of skill is a statement by a registered patent attorney that, in the opinion of that registered patent attorney, the person concerned has experience in one or more of the necessary skills. The registered patent attorney must have at least five years post-registration experience prior to the period covered by the statement.

Trade Marks Attorneys

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.

However, New Zealanders can qualify as Australian Trade Marks Attorneys. The website of the Trans-Tasman IP Attorney Board (the Board) has more information about this process here.

If you have questions please refer to the Trans-Tasman IP Attorney Board website or email secretary@nzipa.org.nz .


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