Patent attorneys may be (whether they like it or not), just like lawyers after all.
The Federal Court has recently considered the updated s200 of the Patents Act relating to attorney/client privilege, which was amended by the Raising the Bar Reforms (see our IP blogs here and here).
The Court confirmed that, as was intended by the amendments, s200 of the Act protects communications between a patent attorney and his or her client which are made for the dominant purpose of providing intellectual property advice to the client to the same extent as such communications would be protected if they were between a legal practitioner and his or her client.
Client/attorney advice privilege
In Australian Mud Company Pty Ltd v Coretell Pty Ltd  FCA 200, Nicholas J was asked to determine a privilege claim relating to the admissibility of parts of an affidavit, in advance of a trial set down before McKerracher J.
The respondents had filed an affidavit of Christopher Bradford, a former employee of one of the applicants’ parent companies, which included evidence relating to communications he had with patent attorneys.
The applicants claimed that this evidence was inadmissible because it contained communications between a registered patent attorney for the dominant purpose of providing intellectual property advice to a client. This is commonly known as an ‘advice privilege’ claim.
In considering the privilege claim, Nicholas J discussed the interaction between s200 of the Patents Act and s118 of the Evidence Act. s200 of the Patents Act essentially provides that attorney / client advice privilege is the same as solicitor / client advice privilege. s118 of the Evidence Act out the law in relation to the inadmissibility of evidence which discloses legal advice.
When considering a privilege claim for legal advice (under s118 of the Evidence Act), the first consideration is the scope of the claim. It is possible that the privilege will extend beyond the giving (or requesting) of legal advice. Nicholas J said:
“The expression “legal advice” in this context is to be broadly construed to encompass communications including some that might not, at first glance, constitute legal advice per se, but which are nevertheless protected because they are sufficiently connected with the giving or obtaining of such legal advice”
So, the ambit of the privilege claim may be wider than (for example) a letter from a patent attorney advising about a patent application.
Just like legal professional privilege, attorney / client privilege can be waived either expressly or by implication (where there is an inconsistency with a party maintaining the privilege claim).
In Australian Mud Company, the respondents relied on a number of documents that had been disclosed by the applicants which, they claimed, waived privilege in the material contained in Mr Bradford’s affidavit. These documents included:
- An email asking for schematics and drawings relating to the tool to pass on to patent “lawyers”;
- An email attaching three AutoCAD drawings relating to the tool “which should prove useful for the patent application”;
- An email advising that the employee she had forwarded the drawings “to our lawyers”;
- An email in which Mr Bradford states that he had “conducted a brief meeting with a patient (sic) attorney” and had been asked certain questions regarding the operation of the tool. Mr Bradford requested that an answer be provided to the patent attorneys, since he says that “We have tried to relate our knowledge to the attorney, without much success and think it would be simpler and certainly more accurate if you could shed some light on these matters”;
- An email which provides the details of the working of the tool required by the patent attorneys.
His Honour found that each of these documents had been created “for the dominant purpose of enabling the party who authorised its creation to obtain the professional advice and assistance of the patent attorneys in relation to the proposed patent application”. In other, words, the applicants could have claimed advice privilege over the documents.
However, as the applicants submitted that none of the documents were privileged, his Honour found that it would be inconsistent for the applicants, after having voluntarily disclosed such information to the respondents through the discovery process, to object to Mr Bradford giving evidence of such matters. A waiver of privilege had occurred.
On this basis, his Honour made orders that parts of the affidavit were ‘not inadmissible’ (as they may be subject to further admissibility claims relating to relevance at trial).
With great power comes great responsibility
The good news for patent attorneys is that the Court has confirmed their ‘advice privilege’ is the same as the privilege between a legal practitioner and client. However, with great power comes great responsibility; as that privilege should be protected otherwise it can be waived and lost.
 s200 of the Patent Act provides:
(2) 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.
(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 (2C) relevantly defines “Intellectual property advice” to mean “advice in relation to … patents” or “any related matters”.
 Nicholas J said
The intention of the 2012 amendments to s 200 is clear from their terms, and is also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Act in which it is said at p 93:
The amendment also makes a number of changes to align the wording in the Patents Act with the wording of section 118 of the Evidence Act. Thus the communication, record or document must be for the ‘dominant’ purpose of a patent attorney providing intellectual property advice in order for the communication, record or document to attract the privilege. This will ensure that the test for client-attorney privilege is consistent with the test for client-lawyer ‘advice’ privilege.
The privilege is intended to apply in the same way and to the same extent for patent attorneys as is [sic] does for lawyers. In particular, if the Evidence Act would apply to lawyers, then the Evidence Act provisions would govern the privilege that applies to attorneys. It is only in a situation in which a lawyer could rely on the common law privilege that the common law rules would govern the privilege that applies to attorneys. It is not intended that attorney privilege would exist in a situation where there would be no equivalent privilege for lawyers.
The amendment also includes a definition of ‘intellectual property advice’. This limits the scope of the privilege to only those fields in which patent attorneys have specialist qualifications and knowledge.
 s118 of the Evidence Act provides:
118. Legal advice
Evidence is not to be adduced if, on objection by a client, the court finds that adducing the evidence would result in disclosure of:
(a) a confidential communication made between the client and a lawyer; or
(b) a confidential communication made between 2 or more lawyers acting for the client; or
(c) the contents of a confidential document (whether delivered or not) prepared by the client, lawyer or another person;
for the dominant purpose of the lawyer, or one or more of the lawyers, providing legal advice to the client.