07 January 2024

The Major Australian Client at the Centre of David and Goliath Legal Battle Between Patent Attorney Firms

Breville invented the electric toasted sandwich maker in 1974As some readers may be aware (I have previously mentioned it only in passing) a firm in the IPH Limited (ASX:IPH) group – the market cap of which is A$1.56B at publication – is once again taking legal action against a recently-established firm and its founders, all of whom are former employees of Spruson & Ferguson (‘S&F’).  Earlier, IPH group firm Pizzeys had sued RnB IP and its two founders – formerly partners in Pizzeys at the  time of its acquisition by IPH – for alleged breach of non-compete, non-dealing, and/or non-solicitation restraints that were included in their employment contracts.  That dispute ultimately settled out of court and was finalised prior to trial, in September 2022, so we did not get the benefit of judicial consideration of whether the contractual restraints were reasonable and/or enforceable.

The startup firm on this occasion is GLMR, founded by Edward Genocchio (‘G’), Michelle Lee (‘L’), David Müller-Wiesner (‘M’) and Simon Reynolds (‘R’).  The firm was also, for a short period, known as LMW IP, which was established by ‘L’ and ‘M’ before they were joined by ‘G’ and ‘R’.  The action taken thus far against GLMR and its founders by S&F is an application to the Federal Court of Australia for preliminary discovery (case no. NSD6/2023), in which the GLMR parties are identified as prospective respondents in a potential future action.  This is the same strategy previously employed by Pizzeys against RnB IP.  In the RnB case, the preliminary application was contested, and resulted in a published decision of Justice Jagot ordering discovery.  In the present case, however, it appears that the parties have reached agreement on scope of discovery, with the corresponding orders made by a Registrar of the court (see orders made on 23 October 2023 [PDF, 135kB]).  While preliminary discovery was initially due by 29 November 2023, this has been extended by further orders to 5.00pm on 16 February 2024.

The discovery orders provide some insight into the nature of S&F’s prospective case against GLMR.  An impression of the impact that GLMR has had on S&F’s patent business can also be discerned from the public records of the Australian Patent Office.  In this article, I take a look at these two aspects of the matter.

02 January 2024

Disciplinary Decision Against Registered Attorney a Reminder of the Importance of Clear Communication and Record Keeping


Back in July, the Trans-Tasman IP Attorneys Disciplinary Tribunal (‘the Tribunal’) issued a decision in relation to a complaint about a registered attorney (‘the attorney’) by a client (‘the client’) in response to which the Trans-Tasman IP Attorneys Board (TTIPAB, a.k.a. ‘the Board’) commenced disciplinary proceedings, bringing nine charges against the attorney.  The full decision of the Tribunal can be found here [PDF, 364kB], while a separate ruling on the penalties to be applied can be found here [PDF, 223kB].  This decision is a ‘first’ in a couple of respects.  It is the first time the Tribunal has sat as a three-member panel (rather than a single decision-maker).  It is also the first time that charges have been brought against an attorney under the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (‘Code of Conduct’’).  Reference to specific provisions of the Code of Conduct has resulted in charges having a clearer basis and greater precision than may have been the case in past disciplinary proceedings.

There are, in this decision, three important messages – or, one would hope, reminders – for registered trans-Tasman patent attorneys.

First, an attorney’s obligation to ‘disclose to a client all information of which the registered attorney is aware that is materially relevant to work being undertaken for the client’ (paragraph 17 of the Code of Conduct) extends to information about the state of the law.  In this case, the attorney was obliged to inform the client about the difficulties inherent in obtaining patents for business methods (whether or not implemented using computer technology), and about the requirement to provide a sufficient disclosure of a claimed invention along with the potential adverse consequences of failing to do so.  The attorney was found to have satisfied the first of these two obligations, but not the second.

Second, an attorney’s obligation to ‘have appropriate competency’ and to carry out work that they undertake ‘with due skill and care’ (paragraph 14 of the Code of Conduct) includes ‘adequately and properly advising’ a client of anticipated legal risks or difficulties that may be encountered in obtaining IP rights.  Closely related to the first point above, in this case the attorney was obliged to properly advise the client of the significant risk that a patent application directed to a business method would be refused, and of the risks associated with failing to include a sufficient disclosure of a claimed invention in a patent application.  Here, the attorney was found to have satisfied neither of these two obligations.

Third, an attorney’s obligation to ‘maintain standards of professional practice as a patent attorney … that are courteous, ethical and well-informed’ (sub-paragraph 13(2) of the Code of Conduct) encompasses appropriate record keeping.  In this case, the attorney was obliged to keep adequate documentation of the advice that had been provided to the client, whether or not that advice was given in writing.  The attorney was found to have failed in this respect with regard to advice provided in relation to two patent specifications prepared on behalf of the client.

I recommend that all registered and prospective trans-Tasman patent attorneys read the full decision.  It is a credit to the profession that disciplinary proceedings are few and far between, but this makes the rare decisions that we do have all the more important.  What follows is my own overview and comments.

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