Privilege is an important tool in your arsenal to protect your client’s interests. The rationale for the existence of privilege is to ensure that clients are able to freely communicate with their attorneys and lawyers without fear that those communications will be able to be used against them.
Privilege belongs to your client. Even though it ‘automatically’ arises when certain criteria are met, ultimately in practice it will be you who decides whether to claim privilege on behalf of your client.
Current state of the law for attorneys
Section 200(2) Patents Act 1990 (Cth) states:
A communication between a registered patent attorney and the attorneys client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client.
The Trade Marks Act 1995 (Cth) has identical provisions in section 229, referring to trade mark attorneys.
Therefore, the following key elements must be satisfied for privilege to arise under the legislation:
- A communication, including records or documents made for the purposes of the communication. This includes correspondence, file notes, minutes of meetings or any other document that records information for the giving or receiving of advice in relation to intellectual property matters;
- A registered patent or trade mark attorney, which until 16 April 2013, will only be those attorneys registered in Australia and not overseas (Eli Lilly and Company and Others v Pfizer Ireland Pharmaceuticals and Another (2004) 137 FCR 573);
- The attorney’s client, but in most circumstances this will not extend to third parties (for example, client’s accountants, financial advisers, and any other related entities); and
- To the extent that privilege applies between a solicitor and his or her client, which we discuss in more detail below.
A brief refresher on legal professional privilege
Legal professional privilege
The following principles apply to legal professional privilege:
- privilege attaches to communication. It is the communication that is protected, not the document in which that communication may be contained, so the communication may be oral, written or recorded, and will adapt with technological advances (emails, SMS etc);
- the communication is confidential, though not necessarily subject to confidential obligations under law. It has to be communicated in circumstances where the recipient is under an express or implied obligation to keep the information confidential;
- the communication is referable to a client/lawyer relationship or between a lawyer and a third party for the benefit of the client; and
- the communication is made for the dominant purpose of either of the following (although there may be an ancillary purpose):
– obtaining legal advice (as long as it is from a lawyer in their professional capacity as a lawyer); or
– for use in existing or anticipated litigation.
Litigation privilege is where privilege attaches to documents that are created for the purpose of litigation or anticipated litigation. Where a lawyer would enjoy litigation privilege, a patent attorney (although not yet a trade mark attorney) will also enjoy litigation privilege. However, litigation privilege covering attorneys will not be as extensive due to the operation of section 200(3) of the Patents Act.
Nothing in this section authorises a registered patent attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court.
Privilege for trade mark attorneys: what about passing off and misleading or deceptive conduct?
One practical issue arises for trade mark attorneys when providing advice on common law trade marks, given that trade mark infringement is normally alongside actions for passing off and misleading or deceptive conduct. Until a Court has made a ruling on this point, we consider that the law is not settled. However, we make the following comments:
- The current s229(3) relates to the type of advice that trade mark attorneys may give to their clients. Intellectual property matters includes matters relating to patents, trade marks, designs or ‘any related matters‘.
- It is significant that s229(3) refers to trade marks and not registered trade marks. Obviously, advice in relation to registered trade marks necessarily involves contemplation of common law trade marks.
- In Wundowie Foundry Pty Ltd v Milson (1993) 44 FCR 474, the court found that patent attorney privilege was not limited to communications made in the course of conduct of activities under the Patents Act, it also covers the legitimate professional activities of patent attorneys.
This supports the argument that trade mark attorneys provide advice in relation to common law trade marks and are not limited to advising about registered trade marks.
Future extent of client attorney privilege
The Raising the Bar Bill has broadened the scope of client attorney privilege in both the Patents Act 1990 and the Trade Marks Act 1995. The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 was passed by Parliament and received Royal Assent on 15 April 2012. The provisions relating to patent and trade mark attorney privilege in Schedule 4 will commence on 16 April 2013. This means that if privilege has arisen in relation to a document up until 15 April 2013, the current and more limited rules will apply.
Effect of new laws
Item 22 of the Explanatory Memorandum for the Raising the Bar Bill makes it clear that these provisions are intended to address the deficiencies in the current legislation, and the result reached in Eli Lilly v Pfizer. Parliament has amended the Patents Act and Trade Marks Act to ensure that foreign patent and trade mark attorneys alike will enjoy the same privilege as their Australian counterparts.
Importantly, the scope of the privilege is limited to the scope of a person’s authority to perform the work in their home country or region: if a person is only authorised to do patents, but not trade marks, work in their home country then they will only receive privilege in Australia for their patents advice.
Key provisions – Patents Act
The Raising the Bar Bill repeals the current section 200(2) of the Patents Act and replaces it with the following:
A communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client.
This introduces several new concepts:
- The dominant purpose of communication, which is consistent with the test for legal professional privilege enjoyed by lawyers.
- Intellectual property advice, rather than intellectual property matters.
Subsection 2A clarifies that records and documents are covered by the privilege:
- (2A) A record or document made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a legal practitioner providing legal advice to a client.
Subsection 2B extends the coverage to attorneys in other countries, as long they are authorised under their home jurisdiction to do so:
- (2B) A reference in subsection (2) or (2A) to a registered patent attorney includes a reference to an individual authorised to do patents work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.
Patents work is itself defined in section 201(2) as
‘…one or more of the following done, on behalf of someone else, for gain:
- applying for or obtaining patents in Australia or anywhere else;
- preparing specifications or other documents for the purposes of this Act or the patent law of another country;
- giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.
Subsection 2C clarifies that intellectual property advice means advice in relation to:
- trade marks;
- plant breeder’s rights; or
- any related matters.
Prior to this, the privilege did not cover plant breeder’s rights under section 200(4).
Key provisions – Trade Marks Act
The new provisions under section 200(2) of the Patents Act are identical to the new provisions to be inserted into section 229 of the Trade Marks Act.
Exclusion of broad litigation privilege as a general rule
The Explanatory Memorandum makes it clear that patent and trade mark attorneys do not enjoy all privileges associated with lawyers:
Note that the client attorney privilege is not intended to mirror client-lawyer ‘litigation’ privilege (see section 119 of the Evidence Act). Attorneys do not have the same rights as lawyers do to initiate proceedings and represent parties in court. Accordingly, it is inappropriate to extend attorney-client privilege to include ‘litigation’ privilege: this should be the sole preserve of lawyers.
It is not intended that attorney privilege would exist in a situation where there would be no equivalent privilege for lawyers.
Therefore, even though litigation privilege may be enjoyed in certain circumstances, for example where it applies to a lawyer under section 119 of the Evidence Act 1995 (Cth), it will not apply to attorneys all of the time. Likewise, privilege arising under the Uniform Civil Procedure Rules will apply to attorneys.
If you are across these issues, you can help to ensure that your clients’ best interests are protected:
- Privilege for patent and trade marks attorneys is governed by the Patents Act and the Trade Marks Act.
- Currently – only attorneys registered in Australia are protected. This means you should be mindful of communications with your overseas counterparts until the Raising the Bar Bill amendments come into effect.
- From 16 April 2013 – attorneys registered overseas will also be protected in the same way that Australian attorneys are protected by privilege.
- In order to determine if there is a valid claim of privilege, you need to look at whether a lawyer would be protected in the same circumstance. This requires an analysis of the dominant purpose for creating the document – was it for the giving or receiving of legal advice? Was it for use in actual or anticipated litigation?