Eloise Kearney

Raising the bar part 7: Assisting the operations of the IP Profession

Eloise Kearney

19 April 2013

Patents Trade marks

In Part 7 of our series on the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Raising the Bar), we set out the key reforms arising out of Schedule 4 of the Raising the Bar Act, which are intended to assist the IP Profession.  These appear to be directed to ameliorate some of the statutory differences that exist between trade mark / patent attorneys and the legal profession.


As the Explanatory Memorandum for the bill set out:


Currently, there are anomalies between the ways in which patent and trade mark attorneys can conduct their business and the ways in which other professionals can operate, specifically the legal profession. The Bill amends the Patents and Trade Marks Acts to allow attorneys to incorporate and to extend to client-attorney communications the same privilege as currently exists for communications between a lawyer and their client. The changes will help patent and trade mark attorneys deliver professional high quality services to their clients.


Patents Act 1990 (Cth) – key reforms


Arguably, the most important amendments to the Patents Act 1990 relate to client attorney privilege, and extends the operation of privilege to overseas attorneys who are suitably qualified in their own jurisdiction.  Another key reform is to extend to attorneys the ability to form an incorporated practice, in much the same manner as solicitors, with associated disclosure and penalty provisions.


A summary of all reforms in Schedule 4 is below:



Trade Marks Act 1995 (Cth) – key reforms


The Schedule 4 amendments to the Trade Marks Act 1995 (Cth) largely reflect the amendments made to the Patents Act 1990 (Cth), and are summarised below: