Patent, Trademark Attorney Privilege to be Expanded
03 October 2012
Australia’s Federal Government has announced it will increase protection for communications between patent and trademark attorneys and their clients, say Richard Hamer, a Melbourne-based partner at Allens Arthur Robinson, and Joelle Vincent, a lawyer at the firm.
In Eli Lilly v. Pfizer Ireland Pharmaceuticals (No 2), the Federal Court stated that patent attorney privilege applies to communications between a client and their patent attorney only when the attorney is registered in Australia, the lawyers wrote in the Allens Arthur Robinson Intellectual Property Bulletin.
“The decision made it clear that client communications with foreign attorneys do not attract the same privilege that applies to client communications with lawyers. In the five years since that decision was handed down, the Intellectual Property Committee of the Law Council of Australia (IP Australia) has made overcoming the effect of Eli Lilly a priority, and has monitored and consulted on the issue,” they said.
The Federal Government has now announced that it will amend the Patents Act 1990 (Cth) and the Trade Marks Act 1995 (Cth) to increase the protection for clients of patent and trademark attorneys, the lawyers write. “The amendments will make the privilege available for communications between a client and an attorney who is registered in Australia or another jurisdiction, bringing it in line with that applying to communications with legal practitioners. IP Australia has said that it intends the amendments to mirror those recently made to the sections regarding privilege in the Evidence Act 1995 (Cth), particularly in terms of definitions and structure.”
The amended provisions will apply to professional services including patents, trademarks, designs, plant breeder's rights and any related matters. The amendments are included in a bid for the autumn 2010 sitting of Parliament.
