صكّ الملكية الفكرية (معايير الممارسة) رقم 1 لعام 2013، أستراليا

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

This instrument commences on 15 April 2013.

For paragraph 228(2)(r)(ia) of the Patents Act 1990 and paragraph 231(2)(ha)(ia) of the Trade Marks Act 1995, the Professional Standards Board establishes the Code of Conduct for Patent and Trade Marks Attorneys (published by the Board and commencing on 1 July 2008) as a standard of practice.

PROFESSIONAL STANDARDS BOARD FOR PATENT AND TRADE MARKS ATTORNEYS

22 March 2013

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CODE OF CONDUCT

FOR

PATENT AND TRADE MARKS

ATTORNEYS

1 July 2008

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CODE OF CONDUCT

FOR

PATENT AND TRADE MARKS ATTORNEYS

1 JULY 2008

1. BACKGROUND

1.1. The Code of Conduct published by the Professional Standards Board for Patent

and Trade Marks Attorneys (the Board) applies to all registered patent and trade

marks attorneys (attorneys) including those employed in companies undertaking

the business of the company.

1.2. The former Code of Conduct was developed by the Board on the basis of wide-

spread stakeholder consultation and with the cooperation of the profession and

the Australian Competition and Consumer Commission (ACCC). It was

established at the instigation of the Government in its response to the Review of

the Regulatory Regime for Patent Attorneys undertaken in 1996.

1.3. The Board has revised the former Code of Conduct to reflect changes to the

discipline regime for registered attorneys brought about by amendments to the

Patents Regulations 1991 and the Trade Marks Regulations 1995.

1.4. In this Code a reference to the professions is a reference to the patent and trade

marks attorney professions.

1.5. This Code commences on 1 July 2008.

2. OBJECTIVES OF THE CODE

2.1 To provide a framework for fair and equitable dealing between attorneys and

their clients; attorneys and their fellow practitioners; and attorneys and IP

Australia – the office of Patents, Trade Marks, Designs and Plant Breeders

Rights.

2.2 To provide a standard of acceptable conduct that can be used in the settling of

disputes.

2.3 To assist clients of attorneys and others dealing with the professions to

understand the obligations of attorneys to their clients, IP Australia and each

other. The Code also provides how information can be provided to the Board to

enable the Board to investigate the conduct of the attorney.

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3. THE CODE OF CONDUCT

3.1 Preamble

i. The Code contains specific comment about some behaviour by way of

illustration to assist attorneys and their clients to understand the breadth of the

Code and the types of conduct covered. The specific instances are not

exhaustive and in no way limit the impact of the principles of the Code on the

individual attorney's method of practice.

ii. This Code does not diminish an attorney’s responsibility to act according to

law. In addition, it does not in any way diminish a client’s rights.

3.2 Code

3.2.1 Only registered patent attorneys, as defined under the Patents Act 1990, may

undertake all aspects of practice as patent attorneys and may describe

themselves as patent attorneys. Only registered trade marks attorneys, as defined

under the Trade Marks Act 1995, may describe themselves as trade marks

attorneys or as trade mark agents.

i. The Patents Act 1990 allows legal practitioners, who are not patent attorneys,

to carry on the business, act or practice as a patent attorney but they must not

describe themselves as patent attorneys. They are not allowed to prepare

specifications, except under specified conditions, such as acting under the

instructions of a registered patent attorney, or acting at the direction of a court.

The Act also allows the client of a registered patent attorney the right to claim

privilege in relation to communications with the patent attorney in appropriate

circumstances.

ii. The Trade Marks Act 1995 allows any person to practise before IP Australia

in trade mark matters, but only registered trade marks attorneys have the right

to describe themselves as trade marks attorneys or trade marks agents. The

Act also allows the client of a registered trade marks attorney the right to

claim privilege in relation to communications with the trade marks attorney in

appropriate circumstances.

iii. An attorney must not undertake work for which he/she is not qualified, for

example, an attorney must not purport to be able to represent a client before a

court if they are not entitled to do so.

3.2.2 An attorney supervising unqualified staff is responsible for the work of the

unqualified staff.

i. If a client is dealing with a staff member who is not an attorney, the client

must be informed that the staff member is not registered. The staff member

must work under the active supervision of an attorney.

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3.2.3 In the interests of clients, the qualifications of an attorney to practise will be

clearly indicated, and appropriate expertise, including technical expertise, will

be brought to bear on work entrusted by clients.

3.2.4 Where an attorney engages another practitioner, either in Australia or in another

country to act on behalf of a client, the attorney must make inquiries to satisfy

himself or herself that the other practitioner is appropriately qualified to carry

out the work required.

3.2.5 An attorney must at all times maintain standards of professional practice which

are at once courteous, ethical and well-informed.

i. An attorney must act according to, and uphold the norms of the professions.

ii. An attorney must not act in a way that is fraudulent or deceitful and must at all

times ensure that his/her conduct is appropriate to the professions.

iii. The success of the professions relies heavily on trust, honesty, and a high

standard of behaviour as described in the following paragraphs.

iv. An attorney must make available to a client, information regarding the

implications of having the attorney act on the behalf of the client in a matter,

in terms of procedures, cost and timing. This will ensure that the client is

made aware of the likely costs of the actions that are necessary or

recommended by the attorney.

v. At the request of a client, an attorney must provide a detailed estimate of the

cost of acting for the client in a particular matter.

vi. Where an attorney withdraws his or her services or ceases to act for a client,

the attorney must inform the client of any actions necessary to maintain the

intellectual property rights of that client.

3.2.6 An attorney must handle the funds of a client in accordance with proper

accounting practices. An attorney must not use monies paid by a client other

than for the purposes for which the monies are paid.

3.2.7 An attorney must at all times act within the law and be subject to that obligation

in the best interests of the client.

i. An attorney must act promptly on a client’s instructions or promptly inform a

client of his or her inability to do so.

ii. An attorney must not use his/her position to take advantage of either on

his/her own account or on behalf of another person -

 information given to the attorney by a client, or

 circumstances resulting from the professional relationship with a

client.

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iii. A client should be given an opportunity to view drafts of specifications where

time allows.

iv. Subject to the client satisfying any lien imposed in accordance with the

relevant legislation, all documents, samples and other material that is the

property of the client must be made available or forwarded to the client on

request.

3.2.8 An attorney must take all reasonable steps to avoid situations in which a conflict

between the interests of a client and the interests of the attorney or those of

another client may occur.

i. Where a conflict or a potential conflict arises, an attorney must take

immediate steps to resolve the conflict. Where the rights of a person might be

put at risk by failing to act urgently in a conflict or potential conflict, the

attorney must take the necessary action to maintain the rights of a person and

then immediately resolve the conflict.

3.2.9 An attorney must not engage in behaviours or practices which are misleading or

deceptive, or that are likely to mislead or deceive. This includes dealings with

IP Australia and in, particular, dealings with the Commissioner of Patents,

Registrar of Trade Marks, Registrar of Designs and Registrar of Plant Breeders

Rights.

i. To mislead someone may include:

 lying to them;

 leading them to a wrong conclusion;

 creating a false impression;

 leaving out (or hiding) important information; and

 making false or inaccurate claims.

ii. Advertising is permitted but it should be honest and accurate and it should

avoid the pitfalls described above. If it is of a comparative nature it must be

factually supportable and any comparisons must not be misleading.

4. WHAT IS EXPECTED OF CLIENTS

4.1 The following is intended to assist a client in understanding what makes for a

successful relationship with an attorney.

4.2 Clients should:

 assist the attorney to provide appropriate advice or take appropriate

action by disclosing all relevant information they hold in respect of

the rights sought;

 provide attorneys with clear and timely instructions based on the

advice given;

 provide timely responses to requests from the attorney;

 settle accounts provided by attorneys promptly, including charges

for overseas actions commissioned by the attorney in accordance

with client instructions;

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 provide advance payments when requested; and

 observe the same standards of honesty and courtesy in the

relationship as are required of the attorneys themselves.

5. COMPLAINTS AGAINST AN ATTORNEY

5.1 Grounds for complaint

i. A complaint or information on the behaviour of an attorney may be provided

to the Board on the grounds that an attorney:

 has breached this Code;

 has engaged in professional misconduct or unsatisfactory

professional conduct;

 was unqualified at the time of registration; or

 has obtained registration by fraud.

5.2 Definitions

i. Professional misconduct means:

 unsatisfactory professional conduct that involves a substantial or

consistent failure to reach reasonable standards of competence and

diligence; or

 any other conduct, whether occurring in connection with practice

as an attorney or otherwise, that shows that the attorney is not of

good fame, integrity and character; or

 any contravention of a law that is declared by the Patents

Regulations 1991 or the Trade Marks Regulations 1995 to be

professional misconduct.

ii Unsatisfactory professional conduct includes conduct, in connection with

practice as a registered patent or trade marks attorney that falls short of the

standard of competence, diligence and behaviour that a member of the public is

entitled to expect of an attorney.

5.3 Complaints and Discipline

i. The Board has the sole responsibility for commencing and conducting

disciplinary proceedings against a registered attorney.

ii. Any person or body may complain or provide information to the Board

concerning the conduct of a registered attorney.

iii. The Board’s role in the commencing of disciplinary proceedings includes

investigating either as a result of information received or of its own motion

whether an attorney has engaged in professional misconduct or unsatisfactory

professional conduct.

iv. Clients must discuss a grievance with an attorney to attempt settlement before

referring the conduct of the attorney to the Board.

5.4 Complaints Can Be Made To:

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i. A complaint about the conduct of an attorney under this Code of Conduct

must be made to:

The Secretary

Professional Standards Board for Patent and Trade Marks

Attorneys

PO Box 200

WODEN ACT 2606

Phone: (02) 6283 2345.

6. ADMINISTRATION OF THIS CODE

6.1 Administration body

i. The Code is a publicly available document and it is administered by the

Professional Standards Board for Patent and Trade Marks Attorneys

established under the Patents Act 1990 and the Patents Regulations 1991.

ii. The Board will supervise:

 the publicising of the Code, ensuring widespread awareness of its

provisions;

 the availability of the Code to clients and potential clients;

 the implementation of measures for ensuring attorney awareness of

the Code;

 the conduct of periodic reviews of the effectiveness of the Code

and its procedures with a view to possible change; and

 the preparation of annual and other reports in relation to the Code.

iii. Copies of this Code of Conduct are available on the PSB Website and can be

obtained from:

Professional Standards Board Secretariat

PO Box 200

WODEN ACT 2606

Phone: (02) 6283 2345.

Email: mail.psb@ipaustralia.gov.au

Website: www.psb.gov.au

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