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Attorney Privilege in Australia

Date: 05 October 2010
Author: Chris Owens
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Both the Australian Patents Act and Trade Marks Act provide the clients of Australian patent attorneys and trade marks attorneys  the benefit of privilege (protection against forcible disclosure of IP professional advice in IP Matters). However this provision has been shown to be lacking in recent years as it does not extend protection to communications with foreign patent attorneys, trade mark practitioners or other third party advisers.
 
Over the past two years, the Australian Patent Office has worked with a committee of representatives of NGOs, to review the privilege provisions afforded to the clients of Australian patent and trade marks attorneys following recent decisions in Australian courts where privilege was denied.  Chris Owens participated on this committee in his capacity as President of the Australian Group of APAA along with representatives from IPTA, AIPPI, FICPI and the Law Council of Australia.
 
This review was part of a broader international effort led by FICPI to progress an international treaty on Privilege.  The Australian Patent Office was enthusiastic in its recognition of the benefits of such a treaty and agreed to take an active part in encouraging other nations to support a WIPO treaty proposal, and has adopted the view that the best way to encourage others is to enact legislation that might be seen as a model for others.
 
The outcome is that proposed amendments to the Australian Patents and Trade Marks  Acts are in the process of being drafted.  These amendments will extend protection for clients of patent attorneys and trade mark practitioners. The proposal is that protection against forcible disclosure of IP professional advice in IP Matters will be extended to include communications with foreign patent and legal practitioners as well as third party advisors (i.e. expert witnesses).  The amendments will also make it clear that protection covers verbal and written communications.
 
The wording of the amendment to the Patents Act proposed by the Patent Office is set out below:
  1. A communication to or from, or for the purposes of providing information to, a patent practitioner in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged as at the date at which privilege is claimed in the same way and to the same extent as a communication to or from, or for the purposes of providing information to, a lawyer.

The definition of a patent practitioner is very broad and will encompass Australian patent attorneys and foreign registered patent attorneys and agents, and other patent practitioners entitled in their particular jurisdiction to prepare patent specifications for gain, as well as employees of such practitioners.

 
A similar provision in relation to trade mark practitioners is proposed for the Trade Marks Act. Note that legal practitioners are provided for in other, already existing, legislation.
 
In their present form the proposed legislative changes do not require any form of reciprocal protection in other jurisdictions.
 
Note that this proposal is at a preliminary stage and the final form could vary from the current proposal, although the amendments seem non-controversial and so dramatic changes are not anticipated.  It is hoped that the legislation might be passed by parliament in the first half of next year.
 
If you have any questions or require any assistance in relation to IP protection in Australia, please email Chris Owens, or any of the other practitioners of FB Rice & Co via our website, or call on +61 2 8231 1000.
 
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