Patent Attorneys
Trade Marks Attorneys

Patent Attorneys

• registration is compulsory for patent attorneys
• only registered patent attorneys have the right to use the titles "patent attorney" and "patent agent"
• your clients have the same right as a solicitor to privilege in respect of professional communication
• you have a right of lien over client documents in certain circumstances
• you are subject to statutory discipline provisions and governed by a voluntary professional code of conduct

Learn more about the

• Right of Practice;
• Right to Title;
• Partnerships;
• Privileges and ;
• Standards of Service.

Right of Practice

You are not permitted to carry on business as a patent attorney unless registered as a patent attorney or, within the terms of the legislation, a legal practitioner. [Sub section 201(1) of the Patents Act 1990]

You are considered to be carrying on a business as a patent attorney if you undertake to do, on behalf of someone else, any of the following in Australia for gain -

• apply for or obtain patents in Australia or elsewhere
• prepare specifications or other documents for the purpose of the Patents Act 1990 or the patent law of another country
• give advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.

Legal practitioners are prohibited from preparing specifications or documents relating to specifications unless -

• the practitioner is acting under instruction of a registered patent attorney, or
• the court has directed the amendment. [Section 202 of the Patents Act 1990]

Patent attorneys are not authorised to prepare documents to be issued from or filed in a court or to transact business, or conduct proceedings, in a court. [Section 200 of the Patents Act 1990]

Employees of a company who are not registered patent attorneys may act on behalf of their employers, or an employer related company, in patent matters. This includes drafting and amendment of specifications. [Sub section 201(8) of the Patents Act 1990]

Partnerships must not describe the partnership as a patent attorney or agent unless at least one member is a registered patent attorney. [Sub section 205(4) of the Patents Act 1990]

Companies are prohibited from carrying on business, practising, acting, describing or holding themselves out as patent attorneys or agents for obtaining patents. [Sub section 201(5) of the Patents Act 1990]

Offences

Penalties are prescribed in the Patents Act 1990 for breaches of the provisions relating to practice where people without the appropriate registration or qualification carry on business as patent attorneys.

Anyone carrying on a business, practising or acting as a patent attorney without being registered as a patent attorney or being a registered patent attorney is liable for a penalty of $3000.

Members of partnerships carrying on business, practising or acting as patent attorneys are liable to a penalty of $3000 unless at least one of the members is a registered patent attorney or a legal practitioner who is eligible to practice under other provisions.

Companies carrying on business, practising, acting, describing themselves, or holding themselves out as patent attorneys or agents for obtaining patents will incur a penalty of $15,000.

Right to Title

Only registered patent attorneys are permitted to describe themselves or hold themselves out as patent attorneys or agents for obtaining patents. [Sub section 201(3) of the Patents Act 1990]

Penalty

Those describing themselves or holding themselves out or permitting themselves to be described as patent attorneys or agents for obtaining patents are subject to a penalty of $3000 if they are not registered.

Partnerships

Patent attorneys may practise in partnerships with other patent attorneys or other professionals if one of the partners is a registered patent attorney.

However, non-patent attorney members or employees of the partnership must not prepare specifications or documents to amend specifications unless they are working under the supervision of patent attorney partners or a court directs the amendments. [Sub section 201(4) and section 202A of the Patents Act 1990]

Penalty

Members of a partnership without a registered patent attorney partner are liable to a penalty of $3000 for describing the partnership, or holding the partnership out, or permitting the partnership to be held out or described as patent attorneys or agents for obtaining patents.

Members of a partnership who are not registered patent attorneys and prepare specifications or documents relating to amendments of specifications without supervision from a registered patent attorney or direction from the court are subject to a penalty of $3000.

Privileges

A registered patent attorney is entitled to prepare all documents, transact all business and conduct all proceedings in accordance with the provisions in the Patents Act 1990. [Section 200 of the Patents Act 1990]

However, registered patent attorneys are not authorised to prepare documents to be issued from or filed in courts or to transact business, or conduct proceedings, in courts unless they are also legal practitioners.

Communications

Communications between registered patent attorneys and their clients in intellectual property matters - and any record or document made for the purposes of such communications - are privileged to the same extent as communications between solicitors and their clients.

For the purpose of privileged communications intellectual property is defined as -

• matters relating to patents
• matters relating to trade marks
• matters relating to designs, or
• any related matters.

Lien

Registered patent attorneys have the same right of lien over documents and property of clients as solicitors.

Standards of Service

Code of conduct

The Government has asked the Professional Standards Board for Patent and Trade Marks Attorneys and the profession to work with the Australian Competition and Consumer Commission to develop a Code of Conduct for the professions.

Consultation is taking place between the relevant groups and the code will be published on this site when complete.

The Institute of Patent and Trade Mark Attorneys of Australia has a Code of Conduct that applies to its members. Inquiries concerning that code should be addressed to the Institute. (insert link to http://www.ipta.com.au/)

Regular attendance at office

Registered patent attorneys who hold themselves out as practising or acting as patent attorneys at an office or place of business where specifications and other documents are prepared must have a registered patent attorney in regular attendance at and in continuous charge of that office or place of business. [Section 203 of the Patents Act 1990]

Failure to comply will incur a penalty of $3000.

Discipline of registered patent attorneys

Registered patent attorneys may be disciplined on the following grounds -

• that the complainant's interests have been affected by the unprofessional conduct of the registered patent attorney
• that the registered patent attorney was unqualified at the time of obtaining registration, or
• the registered attorney obtained registration by fraud.

Complaints are lodged with the Secretary of the Professional Standards Board for Patent and Trade Marks Attorneys.

The Board is required to seek relevant information from the attorney and any additional information from the attorney or the complainant before determining whether it appears that the attorney may be guilty of unprofessional or unsatisfactory conduct.

Where the Board considers the attorney may be guilty of unprofessional or unsatisfactory conduct, being unqualified at the time of registration, or obtaining registration by fraud, it is required to authorise the complainant to bring the complaint to the Patent and Trade Marks Attorneys Disciplinary Tribunal.

The Tribunal determined whether the attorney is guilty of the charge. Where the attorney is found guilty of unprofessional or unsatisfactory conduct, the Tribunal may -

• reprimand the attorney
• suspend the attorney, or
• in the case of unprofessional conduct, cancel the attorney's registration.

Where the attorney is found to have been unqualified at the time of registration, the Tribunal may -

• reprimand the attorney in a case where the attorney has since qualified, or
• in any other case cancel the registration.

In the case of fraud, the Tribunal is required to cancel the registration.

Trade Marks Attorneys

• only registered trade marks attorneys have the right to use the titles "trade marks attorney" and "trade marks agent"

• your clients have the same right as a solicitor to privilege in respect of professional communication

• you have a right of lien over client documents in certain circumstances

• you are subject to statutory discipline provisions and governed by a voluntary professional code of conduct

Learn more about the

• Right of Practice;
• Right to Title;
• Partnerships;
• Privileges and ;
• Standards of Service.

Right of Practice

Registration is not compulsory for practice in trade marks matters - anyone has a right to practice before the Trade Marks Office on behalf of another person for gain.

However, only registered trade marks attorneys can practise as trade marks attorneys and have the other rights attached to registration.

Only registered trade marks attorneys, patent attorneys, legal practitioners or people with the right to practise as trade marks agents under the Trade Marks Act 1955 can practise as trade marks agents. [Sub section 156(1) of the Trade Marks Act 1995]

Right to Title

Only registered trade marks attorneys are permitted to describe themselves or hold themselves out as trade marks attorneys. [Sub section 156(1) of the Trade Marks Act 1995]

You are not permitted to describe yourself as a trade marks agent unless you are a registered trade marks attorney, patent attorney, legal practitioner or someone with the right to practice as a trade marks agent under the Trade Marks Act 1955. [Sub section 156(2) of the Trade Marks Act 1995]

Penalty

Those describing, holding themselves out or permitting themselves to be held out or described as trade marks attorneys or trade marks agents when not entitled to do so will incur a penalty of $3000.

Office holders of body corporates found guilty of the offence can individually be liable for $3000 where they were knowingly party to an offence.

Partnerships

There is no restriction on partnerships for trade marks attorneys or trade marks agents other than restrictions imposed by other professions they might partner with, such as patent attorneys or lawyers.

Privileges

A registered trade marks attorney is entitled to prepare all documents, transact all business and conduct all proceedings in accordance with the provisions in the Trade Marks Act 1995.

However, registered trade marks attorneys are not authorised to prepare documents to be issued from or filed in courts or to transact business, or conduct proceedings, in courts attorneys unless they are also legal practitioners.

Communications

Communications between registered trade marks attorneys and their clients in intellectual property matters - and any record or document made for the purposes of such communications - are privileged to the same extent as communications between solicitors and their clients. [Section 229 of the Trade Marks Act 1995]

For the purpose of privileged communications intellectual property is defined as:

Lien

Registered trade marks attorneys have the same right of lien over documents and property of clients as solicitors.

Standards of Service

Code of conduct

A Code of Conduct for Patent and Trade Marks Attorneys was developed by the Professional Standards Board following consultation with interested parties and with the cooperation of the Australian Competition and Consumer Commission (ACCC).

The Code of Conduct applies to all registered patent and trade marks attorneys including those employed in companies undertaking the business of the company.

The aim of the Code is to:

Further information and hard copies about the Code or the complaint process can be obtained from the Secretary.

Discipline of registered trade marks attorney

Registered trade marks attorneys may be disciplined on the following grounds:

Complaints are lodged with the Secretary of the Professional Standards Board for Patent and Trade Marks Attorneys.

The Board is required to seek relevant information from the attorney and any additional information from the attorney or the complainant before determining whether it appears the attorney may be guilty of unprofessional or unsatisfactory conduct.

Where the Board considers the attorney may be guilty of unprofessional or unsatisfactory conduct, being unqualified at the time of registration, or obtaining registration by fraud, it is required to authorise the complainant to bring the complaint to the Patent and Trade Marks Attorneys Disciplinary Tribunal.

The Patent and Trade Marks Attorneys Discipline Tribunal determines whether the attorney is guilty of the charge. Where the attorney is found guilty of unprofessional or unsatisfactory conduct, it may:

Where the attorney is found to have been unqualified at the time of registration the Tribunal may:

In the case of fraud, the Tribunal is required to cancel the registration.