Code of Conduct for Patent and Trade Marks Attorneys 2013

The  Professional  Standards  Board  for  Patent  and  Trade  Mark  Attorneys  makes  the following Code of Conduct under the Patents Act 1990 and the Trade Marks Act 1995.

Dated: 18 September 2013

The Professional Standards Board for Patent and Trade Mark Attorneys

Contents
Part 1—Preliminary	1
Name of code	1
Commencement	1
Authority	1
Definitions	1
Former Code of Conduct	3
Part 2—Overview	4
Application of code	4
Objectives of code	4
Examples in code	5
Rights of clients not affected	5
Part 3—Professional conduct	6
Application of Part 3	6
Core obligations	6
Competency	7
Information for new or prospective clients	7
Information and services for existing clients	8
Conflict of interest	9
Acting on instructions	10
Honesty of statements and documents	10
Payments and funds	11
Use of information	11
Withdrawal of services	12
Supervision of associated persons	12
Additional obligations of directors	13
Additional obligations of incorporated attorneys	13
Part 4—Information about complaints against registered attorneys	15
Information	15
Part 5—Administration	16
Information	16
Schedule 1—Repeals	17

Section 1

Part 1—Preliminary

Name of code

This code is the Code of Conduct for Patent and Trade Marks Attorneys 2013.

Note:	The Patents Act and the Trade Marks Act provide for the control of the professional conduct of registered attorneys, and for the control of the practice of the professions, by reference to standards of practice established by the Board from time to time. In this instrument, those standards are referred to as the code.

Commencement

This code commences on the day that is 1 month after the day this code is registered.

Authority

This code is made under the Patents Act 1990 and the Trade Marks Act 1995.

Definitions

In this code:

associated person means:
in relation to a registered patent attorney who is an individual—a person (including another registered patent attorney who is an individual) who does work for the registered patent attorney under a contract or other arrangement (including a person who acts as the agent or representative of the registered patent attorney for the purposes of the Patents Act); and
in relation to an incorporated patent attorney—a person who:
is not a staff attorney; and
does work for the incorporated patent attorney under a contract or other arrangement (including a person who acts as the agent or representative of the incorporated patent attorney for the purposes of the Patents Act); and
in relation to a registered trade marks attorney who is an individual—a person (including another registered trade marks attorney who is an individual) who does work for the registered trade marks attorney under a contract or other arrangement (including a person who acts as the agent or representative of the registered trade marks attorney for the purposes of the Trade Marks Act); and
in relation to an incorporated trade marks attorney—a person who:
is not a staff attorney; and
does work for the incorporated trade marks attorney under a contract or other arrangement (including a person who acts as the agent or representative of the incorporated trade marks attorney for the purposes of the Trade Marks Act).

Board means the Professional Standards Board for Patent and Trade Marks Attorneys.

director means a patent attorney director or trade marks attorney director.

foreign-registered attorney means an individual or a body corporate (however described) that is authorised, under a law of another country or region, to do some or all of the following work:
applying for patents, trade marks, designs or plant breeder’s rights;
obtaining patents, trade marks, designs or plant breeder’s rights;
preparing applications or other documents for the purposes of the laws of that country or region relating to patents, trade marks, designs or plant breeder’s rights;
giving advice about the validity of patents, trade marks, designs or plant breeder’s rights;
giving advice about the possible infringement of patents, trade marks, designs or plant breeder’s rights.

incorporated attorney means an incorporated patent attorney or an incorporated trade marks attorney.

incorporated patent attorney has the same meaning as in the Patents Act.

incorporated trade marks attorney has the same meaning as in the Trade Marks Act.

patent attorney director has the same meaning as in the Patents Act.

Note:	The expression is explained in subsection 198(11) of the Patents Act.

Patents Act means the Patents Act 1990.

professions means:
the patent attorney profession; and
the trade marks attorney profession.

registered attorney means a person to whom this code applies.

Note:	This code applies to:
an individual patent attorney, an incorporated patent attorney and a patent attorney director; and
an individual trade marks attorney, an incorporated trade marks attorney and a trade marks attorney director.

The Patents Act and the Trade Marks Act explain these terms.

registered patent attorney has the same meaning as in the Patents Act.

registered trade marks attorney has the same meaning as in the Trade Marks Act.

regulatory authority means a body:
established by or under a law; or
otherwise established by a government;

Section 5 Former Code of Conduct

with which a registered attorney may deal with while doing work as a registered attorney.

Examples:  Regulatory authorities include:
IP Australia (which includes the Patents, Trade Marks, Designs and Plant Breeder’s Rights Offices); and
the Australian Customs and Border Protection Service; and
the Australian Competition and Consumer Commission; and
the Intellectual Property Office of New Zealand.

staff attorney means:
an individual who is a registered patent attorney and employed by an incorporated patent attorney; or
an individual who is a registered trade marks attorney and employed by an incorporated trade marks attorney.

Trade Marks Act means the Trade Marks Act 1995.

trade marks attorney director has the same meaning as in the Trade Marks Act.

Note:	The expression is explained in subsection 228A(6C) of the Trade Marks Act.

Former Code of Conduct

This code replaces the Code of Conduct that was published by the Board and commenced on 1 July 2008.

Part 2—Overview

Application of code

This code applies to:
a registered patent attorney; and
a registered trade marks attorney.

Note 1:	When this code commenced:
the Patents Act covered an individual patent attorney, an incorporated patent attorney and a patent attorney director as registered patent attorneys; and
the Trade Marks Act covered an individual trade marks attorney, an incorporated trade marks attorney and a trade marks attorney director as registered trade marks attorneys.

The Patents Act and the Trade Marks Act explain these terms.

Note 2:	Persons working in patents or trade marks must not use the word “attorney” to describe themselves unless the correct registration under the Patents Act or the Trade Marks Act is current and in force. Those Acts, and the Corporations Act 2001, set out requirements that apply to persons who are unregistered but use the word “attorney” to describe themselves.

Objectives of code

The Patents Act and the Trade Marks Act provide for the control of the professional conduct of registered attorneys, and for the control of the practice of the professions, by reference to standards of practice established by the Board from time to time.

Note:	See paragraph 228(2)(r) of the Patents Act and paragraph 231(2)(ha) of the Trade Marks Act.

The objectives of this code are to:
explain the professional conduct required of registered attorneys in their dealings with:
their clients; and
other professional service providers; and
a regulatory authority; and
assist clients of registered attorneys, and others who deal with the professions, to understand the obligations of registered attorneys to their clients and other professional service providers; and
explain how information can be given to the Board to enable it to investigate the conduct of a registered attorney.

Note:	Registered attorneys are expected to comply with this code since the Board is entitled to take a failure to comply with this code into account in assessing the conduct of a registered attorney or a complaint against a registered attorney.

Examples in code

This code contains examples of behaviour to assist registered attorneys and their clients to understand this code and the conduct it covers. The examples are not exhaustive.

Rights of clients not affected

This code does not affect or reduce the rights of a client of a registered attorney in relation to the registered attorney’s conduct.

Part 3—Professional conduct

Application of Part 3

This Part applies to all registered attorneys.

Note:	Some specific obligations in this Part apply only to a registered attorney who is an individual, or in a supervisory role such as a patent attorney director or a trade marks attorney director.

Core obligations

A registered attorney must act as a patent attorney or a trade marks attorney:
in accordance with the law; and
in the best interests of the registered attorney’s client; and
in the public interest; and
in the interests of the registered attorney’s profession as a whole.

If a registered attorney is unable to comply equally with all of the obligations mentioned in subsection (1), the registered attorney must treat the obligations as an order of priority in which paragraph (1)(a) is the highest priority.

A registered attorney:
must not act as a patent attorney or a trade marks attorney in a way that is fraudulent or deceitful; and
must maintain standards of professional practice as a patent attorney or a trade marks attorney that are courteous, ethical and well-informed.

Example:   If a registered attorney behaves disrespectfully and without courtesy to a government officer such as an examiner, or to another attorney or a member of the public, that conduct will reflect poorly on the registered attorney’s profession.

A registered attorney who is an individual is responsible for his or her own work, acts and defaults as a patent attorney or a trade marks attorney.

Note:     If a registered attorney does work for another registered attorney of any kind, the Board also requires the other registered attorney to be responsible for that work and those acts and defaults: see sections 21, 22 and 23.

A registered attorney must:
have a current address at which notices can be served for the purposes of this code; and
ensure that the Board is notified of the current address; and
notify the Board of a change of address within 14 days.

The Board will act on the assumption that a notice served on a registered attorney at an address notified to the Board under paragraph (5)(b) has been received by the registered attorney.

Competency

A registered attorney who is an individual must have appropriate competency for work he or she does.

Example:   Examples of work that must not be done unless the registered attorney possesses suitable competency for the specific task are:
work relating to a field of science or technology with which the registered attorney is unfamiliar; and
work in an area outside the registered attorney’s primary practice area (such as work in relation to patents if he or she has practised only in the area of trade marks).

Note:	This section relates to a registered attorney who is an individual, whether the attorney works on his or her own or in a larger organisation.

Information for new or prospective clients

Before a registered attorney who is an individual does work for a new or prospective client, the registered attorney must ensure that the new or prospective client is given written advice that the registered attorney:
is registered; and
has appropriate competency, including by drawing on technical expertise; and
is bound by this code.

Note:	Under section 12, a registered attorney who is an individual must have appropriate competency for work he or she does.

Before a registered attorney who is an individual does work for a new or prospective client, the registered attorney must ensure that the new or prospective client is given:
a written estimate of the cost of doing particular work for the new or prospective client; and
other written information about the implications of having the registered attorney do the work for the new or prospective client, in terms of procedures, cost and timing.

Note:  Disclosure of this information will ensure that the new or prospective client is made aware of the likely costs of particular work that is necessary or recommended by the registered attorney.

A registered attorney is not required to comply with subsections (1) and (2) if:
the client is represented by a foreign-registered attorney; and
the registered attorney is dealing with the client by dealing with the foreign-registered attorney.

A registered attorney is not required to comply with subsections (1) and (2) if:
the registered attorney has been requested to do work for the client by another registered attorney; and
the other registered attorney continues to act for the client in the work.

Information and services for existing clients

New work outside previous arrangements

Subsections (2) and (3) apply if:
a registered attorney who is an individual is doing work for a client; and
the client requests the registered attorney to do work (new work) that:
is materially different from work the registered attorney has previously done for the client; or
requires competency that the registered attorney has not previously been required to apply for the client; or
makes a material difference to the cost or timing of work that the registered attorney is doing, or has done, for the client, or to procedures required to do that work.

The registered attorney must ensure that the client is given written advice that the registered attorney has appropriate competency for the new work, including by drawing on technical expertise.

Note:	Under section 12, a registered attorney who is an individual must have appropriate competency for work he or she does.

Before the registered attorney does the new work for the client, the registered attorney must ensure that the client is given:
a written estimate of the cost of doing the new work; and
other written information about the implications of doing the new work, in terms of procedures, cost and timing.

Note:	Disclosure of this information will ensure that the client is made aware of the likely costs of particular work that is necessary or recommended by the registered attorney.

Draft specifications or applications

A registered attorney who is an individual must ensure that the client is given an opportunity, if practicable, to view drafts of patent specifications prepared by the registered attorney for the client.

A registered attorney is not required to comply with subsections (1) to (4) if:
the client is represented by a foreign-registered attorney; and
the registered attorney is dealing with the client by dealing with the foreign-registered attorney.

A registered attorney is not required to comply with subsections (1) to (4) if:
the registered attorney has been requested to do work for the client by another registered attorney; and
the other registered attorney continues to act for the client in the work.

Client property

If a client asks a registered attorney to return or make available to the client a document, sample or other material:
that is the client’s property; or

to which the client may have access under an agreement between the registered attorney and the client; or
in which the client has a legal or other interest that entitles the client to have access to the document, sample or material;
the registered attorney must ensure that the document, sample or other material is returned or made available to the client.

However, a registered attorney is not required to comply with subsection (7) if the client has not satisfied a lien imposed in accordance with the Patents Regulations 1991 or the Trade Marks Regulations 1995.

Conflict of interest

Dealing with separate parties to the same matter, etc.

If a registered attorney does work for a client in a matter, the registered attorney may do work for, or provide other assistance to, another person who has a different or contrary interest in the matter only if:
the registered attorney’s knowledge of the client or the matter would not prejudice the registered attorney’s client or provide an unfair advantage to the other person in that matter; and
the registered attorney’s client and the other person agree to allow the registered attorney to do the work or provide the assistance; and
it would not be contrary to a law to do the work or provide the assistance.

Note:	The effect of subsection (1) is that a registered attorney is generally not permitted to work for, or provide other assistance to, persons who have different or contrary interests in a matter unless the special circumstances set out in the subsection exist.

The registered attorney must not do work for, or provide other assistance to, the other person if subsection (1) does not apply.

If there is a dispute between 2 or more persons mentioned in subsection (1) in relation to the matter, the registered attorney must take steps, as soon as practicable, to resolve the conflict.

Avoidance of conflict

A registered attorney who is an individual must avoid the creation of a conflict of interest between:
the interests of the registered attorney; and
the interests of any current or former client.

For subsection (4), the interests of the registered attorney are all of the following:
the interests of the registered attorney;
the interests of a member of the registered attorney’s family;
the interests of a dependent of the registered attorney who is not a member of the registered attorney’s family;
the interests of a friend of the registered attorney;
the interests of a business partner or business associate (however described) of the registered attorney.

Conflict that avoids prejudice

If:
a registered attorney is instructed by a client or a prospective client to do work; and
the registered attorney believes that:
accepting the instructions may create a conflict of interest when or after the work would be done; and
a failure to do the work may result in prejudice to the client; and
it is not reasonably practicable for someone else to do the work; the registered attorney must accept the instructions, advise the client or
prospective client of the potential conflict as soon as practicable, and resolve the
conflict.

Personal interest in intellectual property right

If:
a registered attorney owns an intellectual property right; and
doing work for a client or a prospective client may create a conflict of interest in relation to the property right;
the registered attorney must not do work for the client or prospective client unless the registered attorney discloses the ownership and the client or prospective client agrees to allow the registered attorney to do the work.

Resolution of conflict

If a registered attorney discovers a conflict of interest, or a potential conflict of interest, between:
a registered attorney and a client; or
2 or more persons who have different or contrary interests in a matter; the registered attorney must take steps, as soon as practicable, to resolve the conflict or potential conflict.

If the rights of a client or another person may be put at risk by the registered attorney complying with subsection (8), the registered attorney must take steps, as soon as practicable, to maintain those rights before resolving the conflict or potential conflict.

Acting on instructions

A registered attorney must:
act promptly on the instructions of a client or a prospective client; or
inform the client or prospective client promptly of the registered attorney’s inability to do so.

Honesty of statements and documents

A registered attorney:

must be open and frank in dealing with a regulatory authority, subject only to the registered attorney’s duty to the registered attorney’s clients; and
must not knowingly make a false or misleading statement in relation to work done for a client or a prospective client; and
must not prepare, or assist in the preparation of, a document in relation to a matter if the registered attorney knows, or ought reasonably to know, that the document contains a false or misleading statement; and
must not file, or assist in the filing of, a document in relation to a matter if the registered attorney knows, or ought reasonably to know, that the document contains a false or misleading statement; and
must not wilfully misrepresent facts or otherwise mislead another person in relation to a matter.

The instructions given by a client are not automatically a defence of, or an explanation for, the way a registered attorney acts for the client.

Note:	A registered attorney is likely to have to choose the way in which material such as a specification, application or evidence is best prepared in the interests of the client. The registered attorney’s obligation, having regard to all of the registered attorney’s obligations under this code, is to explain the implications adequately to the client and represent the client in the most diligent way possible but without perpetuating a falsehood or knowingly making a statement which is misleading.

Payments and funds

A registered attorney must ensure that a cost, official fee or debt is paid in a timely manner after the registered attorney’s client has given the relevant amount to the registered attorney.

A registered attorney must ensure that the funds of a client are kept and accounted for using an accounting standard that is appropriate to the circumstances of the registered attorney’s practice.

A registered attorney must use money paid by a client only:
for the purposes for which the client paid the money; or
in accordance with any instructions given by the client before, during or after the payment of the money.

A registered attorney must, as soon as practicable, give a client any refund due to the client.

Use of information

A registered attorney must not use the registered attorney’s position as a registered attorney to take advantage of:
information given by a client, or a prospective client, for the registered attorney’s own benefit or on behalf of another person; or
information given by another person, in relation to the matter for which the client has engaged the registered attorney, for the registered attorney’s own benefit or on behalf of another person; or

circumstances resulting from a professional relationship with a client, or a prospective client, for the registered attorney’s own benefit or on behalf of another person.

A registered attorney must not use or disclose confidential information which the registered attorney has obtained from or on behalf of:
a former, current or prospective client; or
another registered attorney; or
any other person; or
a company:
which is a client; and
of which the registered attorney is, or has been, a director, officer or shareholder;
unless the confidentiality is no longer applicable.

Example:   The following are examples of when confidentiality is no longer applicable:
the registered attorney has been released from the obligation not to disclose the information;
the information has been lawfully published.

Withdrawal of services

If a registered attorney withdraws the registered attorney’s services, or ceases to act for a client, the registered attorney must inform the client of any actions necessary to maintain the client’s intellectual property rights.

Supervision of associated persons

A registered attorney is responsible for the work, acts and defaults of an associated person unless:
the associated person:
is a foreign-registered attorney; and
is outside Australia when the work, act or default occurs; or
the Board is satisfied that:
the associated person is not mentioned in paragraph (a); and
it is appropriate to treat someone else as being responsible for the associated person’s work, acts and defaults.

The Board will control the professional conduct of registered attorneys, and the practice of the professions, on the basis stated in subsection (1) even if the registered attorney works under a management structure that includes other persons.

If a registered attorney wishes to claim that the registered attorney is not responsible for the work, acts and defaults of a particular associated person, the Board will require the registered attorney to demonstrate this to the Board’s satisfaction.

Subsection (5) applies if:
an associated person does work for a registered attorney; and

the work is not clerical or administrative work.

The registered attorney must ensure that:
the associated person has appropriate competency for the work; and
if the associated person is unregistered—the client is informed, as soon as practicable, that the associated person is unregistered.

Additional obligations of directors

This section applies to:
a patent attorney director in the capacity of a patent attorney director; and
a trade marks attorney director in the capacity of a trade marks attorney director.

A director is responsible for the director’s work, acts and defaults as a director.

A director is responsible for the work, acts and defaults of each staff attorney unless the Board is satisfied, in a particular case, that it is appropriate to treat someone else as being responsible for the work, acts and defaults of the staff attorney.

A director is responsible for the work, acts and defaults of each associated person unless:
the associated person:
is a foreign-registered attorney; and
is outside Australia when the work, act or default occurs; or
the Board is satisfied that:
the associated person is not mentioned in paragraph (a); and
it is appropriate to treat someone else as being responsible for the associated person’s work, acts and defaults.

The Board will control the professional conduct of registered attorneys, and the practice of the professions, on the basis stated in subsections (3) and (4) even if the director’s incorporated attorney has a management structure that includes other persons.

If a director wishes to claim that the director is not responsible for the work, acts and defaults of a particular staff attorney or associated person, the Board will require the director to demonstrate this to the Board’s satisfaction.

Additional obligations of incorporated attorneys

This section applies to:
an incorporated patent attorney; and
an incorporated trade marks attorney.

An incorporated attorney is responsible for its work, acts and defaults as an incorporated attorney.

An incorporated attorney is responsible for the work, acts and defaults of:

each director; and
each staff attorney;
unless the Board is satisfied, in a particular case, that it is appropriate to treat someone else as being responsible for the work, acts and defaults of the director or staff attorney.

An incorporated attorney is responsible for the work, acts and defaults of each associated person unless:
the associated person:
is a foreign-registered attorney; and
is outside Australia when the work, act or default occurs; or
the Board is satisfied that:
the associated person is not mentioned in paragraph (a); and
it is appropriate to treat someone else as being responsible for the associated person’s work, acts and defaults.

The Board will control the professional conduct of incorporated attorneys, and the practice of the professions, on the basis stated in subsections (3) and (4) even if the incorporated attorney has a management structure that includes other persons.

If the incorporated attorney wishes to claim that the incorporated attorney is not responsible for the work, acts and defaults of a particular director, staff attorney or associated person, the Board will require the incorporated attorney to demonstrate this to the Board’s satisfaction.

The incorporated attorney must ensure that:
each director; and
each staff attorney; and
each associated person who is a registered attorney;
acts as a registered attorney in accordance with the requirements in this Part.

Part 4—Information about complaints against registered attorneys

Information

The Board has the sole responsibility for commencing and conducting disciplinary proceedings against a registered attorney.

Note:	Part 8 of Chapter 20, and Part 5 of Chapter 20A, of the Patents Regulations 1991 explain the grounds on which the Board may commence disciplinary proceedings. Those Parts also explain concepts such as:
professional misconduct; and
unsatisfactory professional conduct.

Division 6 of Part 20, and Division 5 of Part 20A, of the Trade Marks Regulations 1995 make the same arrangements.

The Board can take on this role as a result of information it receives or on its own initiative.

The Board may commence proceedings before the Patent and Trade Marks Attorneys Disciplinary Tribunal against a registered attorney who is an individual if the Board is satisfied that there is a reasonable likelihood of that registered attorney being found guilty of unsatisfactory professional conduct. The Board is required to commence proceedings if the Board is satisfied that there is a reasonable likelihood of that registered attorney being found guilty of professional misconduct.

The Board may apply to the Patent and Trade Marks Attorneys Disciplinary Tribunal to cancel or suspend the registration of an incorporated patent attorney or an incorporated trade marks attorney.

Note:	Regulation 20A.10 of the Patents Regulations 1991 and regulation 20A.10 of the Trade Marks Regulations explain the grounds on which the Board may make an application and the procedures applicable to an application.

A person or body may make a complaint to the Board, or provide information to the Board, about the conduct of a registered attorney.

A registered attorney must not:
make a complaint to the Board, or provide information to the Board, under subsection (5) for an improper purpose; or
threaten to make a complaint to the Board, or provide information to the Board, for an improper purpose.

The Board would generally expect a client or former client of a registered attorney to:
discuss a grievance with the registered attorney, to attempt a settlement, before making a complaint or providing information to the Board; and
inform the Board, when making a complaint or providing information, of discussions with the registered attorney and attempts to settle the matter with the registered attorney.

Note:	The Board recognises that there are cases where it would be impossible or inappropriate for a client or former client to contact the registered attorney first.

The Board may issue disciplinary guidelines relating to registered patent attorneys and registered trade marks attorneys.

Note:	See http://www.psb.gov.au.

Part 5—Administration

Information

The Board is responsible for:
publicising this code to ensure widespread awareness of its purpose and provisions; and
implementing measures to ensure that registered attorneys are aware of this code’s purpose and provisions; and
conducting periodic reviews of this code’s effectiveness, and of the procedures in this code, with a view to possible changes; and
preparing annual and other reports relating to this code.

This code is a legislative instrument for the purposes of the Legislative Instruments Act 2003 and is available on the ComLaw website (http://www.comlaw.gov.au).

This code is also available on the Board’s website (http://www.psb.gov.au).

This code is also available from: The Secretary
Professional Standards Board for Patent and Trade Marks Attorneys PO Box 200
WODEN ACT 2606

The Board’s telephone number is available on the Board’s website (http://www.psb.gov.au).

Schedule 1—Repeals

1  Intellectual Property (Standards of Practice) Instrument 2013 (No. 1)
Repeal the instrument.