While most (outside the legal profession, at least) would regard patent attorneys as legal professionals, the fact is that we are not lawyers. For the most part this does not create any problems, and in fact can be handy when we want to avoid bearing the brunt of lawyer jokes at parties. (‘What does a lawyer get when you give him Viagra?’ ‘Taller!’)
However, not being lawyers means that communications between patent attorneys and their clients do not automatically have the benefit of any privilege that would attach to the same communication if it were to occur between lawyer and client. Citing authorities dating back as far as the 1880s, a Federal Court judge stated in 1993 that ‘[t]here was no such privilege [in respect of patent attorney-client communications] at common law. Indeed, communications between a client and his solicitor who was also the client's patent attorney were not privileged if the solicitor received them in his capacity as a patent attorney…’ (Wundowie Foundry Pty Ltd and Clarewood Pty Ltd v Milson Foundry Ltd and David Wallace  FCA 422).
This is clearly a problem. Patent attorneys regularly communicate with their clients, and provide advice, in relation to matters that could be highly prejudicial in the event of litigation including, but not limited to, validity and infringement of patents. In the absence of an effective attorney-client privilege, clients might be discouraged from providing their attorneys with information necessary for them to provide full and considered advice, and attorneys in turn might decline to provide advice that may be adverse to the client in the event of litigation.
The solution to this problem is the provision of a statutory attorney-client privilege in section 200 of the Patents Act 1990. The scope of this privilege was extended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective from 15 April 2013. However, caution is required in relation to certain communications and documents made before this date, which may remain subject to more limited protection from disclosure.
Statutory Patent Attorney PrivilegeThe current attorney-client privilege provisions are set out in subsections 200(2), (2A), (2B) and (2C).
Under s 200(2) and (2A) a communication, 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 communication, record or document made by a legal practitioner for the dominant purpose of providing legal advice to a client.
Subsection 200(2B) extends this privilege to foreign attorneys who are authorised in their own countries to perform the same kinds of work as registered patent attorneys in Australia.
Subsection 200(2C) defines ‘intellectual property advice’ as advice in relation to patents, trade marks, designs, plant breeder’s rights and any related matters. (Note that this does not include copyright, in which patent attorneys are not generally qualified, except to the extent that copyright matters may be related to the various registered IP rights.)
This means that communications, records and documents made by patent attorneys in the course of providing professional advice to clients, including any communications with foreign attorneys that may be required (for example, to advise on infringement or validity of patents granted in other countries) are subject to the same privilege as would be the case if the work was conducted by a solicitor or lawyer.
Prior to 15 April 2013, however, the privilege provision in the Patents Act was more limited. Subsections (2A), (2B) and (2C) did not exist, and subsection (2) provided only that:
A communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such communication, are privileged to the same extent, as a communication between a solicitor and his or her client.
The first two things to note about this provision is that it omits reference to being privileged ‘in the same way’, and that it refers only to a solicitor rather than to a legal practitioner. These differences may or may not be significant in practice.
More importantly, however, there was no provision prior to 15 April 2013 for communications with foreign patent attorney to be privileged. In Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2)  FCA 850 Justice Heerey stated that:
The language of s 200(2) is clear. The privilege is confined to communications with patent attorneys registered as such in Australia. Further, there is no apparent policy reason why Parliament is to be taken to have intended the privilege to extend to communications with any patent attorney anywhere in the world. The requirements for registration in Australia [include] residence in Australia, qualification as prescribed by regulations (which would presumably stipulate knowledge of relevant Australian law and practice), employment for a prescribed period and good fame, integrity and character. The drafters must be taken to have had such persons in mind when they used the expression ‘registered patent attorney’.
What About the Transition?Although the Raising the Bar legislation ‘fixed’ the above problem, it only did so from its commencement on 15 April 2013. The status of communications, records and documents – particularly those involving foreign patent attorneys – made prior to this date is far from clear.
There are no savings or transitional provisions for the new subsections 200(2), (2A), (2B) and 2(C), i.e. nothing in the Raising the Bar Act specifies a particular application of the provisions to pre-existing communications, records and documents. On the plain language of the provisions, it does not appear to matter when the communications, records or documents were made. However, as a general rule amendments to an act are taken not to have any retrospective effect, unless there is an express provision to the contrary.
I wonder what date is relevant when determining which version of s 200 applies? It could be the date on which the communication, record or document in question was made. Or it could be the date of commencement of litigation in which discovery of the document is sought. Or, as yet another option, it could be the date on which an order for discovery is made.
I think it is most likely (and most problematically) to be the first of these possibilities. In Wundowie Foundry, faced with a similar question in relation to changes in the privilege provisions between the 1952 and 1990 Patents Acts, the Federal Court dodged the issue, but expressed clear doubt:
It seems to have been assumed on both sides of the argument that the relevant privilege in relation to the documents, the subject of the motion, derives from s.200(2). However, many of the documents will have come into existence prior to the commencement of the Patents Act 1990, which occurred on 30 April 1991. While s.200(2) clearly applies to documents which came into existence after the commencement date, it is not clear why it should apply to documents which came into existence before that time. In the event, I am content to dispose of the matter on the assumption that s.200(2) applies as the difference between that sub-section and its predecessor does not affect the outcome of this case. (Emphasis added.)
Conclusion – Uncertainty Around Foreign Attorney PrivilegeSince 15 April 2013, it has been clear that communications, records and documents made for the purpose of providing intellectual property advice, whether by Australian registered patent attorneys, or our foreign colleagues, are privileged in the same way, and to the same extent, as would be the case between a legal practitioner and their client.
However, if the communications, records or documents were made by foreign patent attorneys prior to 15 April 2013 it is not at all clear that they are protected by privilege. In fact, it is quite likely that they are not.
We may find out for certain at some point. This seems like the kind of issue that could well arise in the course of litigation, in which case the Federal Court may be compelled to decide a question that it avoided last time there was a change in the legislation relating to patent attorney privilege.
If you have any thoughts about whether the statutory privilege should, or does, apply retrospectively to foreign attorney work, please share them in the comments below.
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