Code of Conduct for Trans-Tasman Patent
and Trade Marks Attorneys 2018
The Trans-Tasman IP Attorneys Board establishes the following Code of Conduct as a standard
of practice under subparagraph 228(2)(r)(ia) of the Patents Act 1990 and
subparagraph 231(2)(ha)(ia) of the Trade Marks Act 1995.
Dated: 14 December 2017
The Trans-Tasman IP Attorneys Board
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Contents
Part 1—Preliminary 1 1 Name of code .............................................................................................................. 1
2 Commencement .......................................................................................................... 1
3 Authority..................................................................................................................... 1
4 Definitions .................................................................................................................. 1
Former Code of Conduct............................................................................................. 3
Part 2—Overview 4 6 Application of code..................................................................................................... 4
7 Objective of code ........................................................................................................ 4
8 Guidelines to code....................................................................................................... 4
9 Rights of clients not affected....................................................................................... 4
Administration of code................................................................................................ 4
Part 3—Professional conduct 6 11 Core obligations .......................................................................................................... 6
12 Responsibility ............................................................................................................. 6
13 Integrity....................................................................................................................... 6
14 Competency ................................................................................................................ 7
Diligence..................................................................................................................... 7
16 Communication........................................................................................................... 7
17 Disclosure ................................................................................................................... 8
18 Confidentiality ............................................................................................................. 8
19 Loyalty........................................................................................................................ 8
Conflicts ..................................................................................................................... 9
21 Independence .............................................................................................................. 9
22 Termination of services............................................................................................. 10
Part 4—Practice management 11 23 Ownership................................................................................................................. 11
24 Funds......................................................................................................................... 11
Client property ........................................................................................................... 11
26 Address ..................................................................................................................... 12
Part 5—Complaints and disciplinary proceedings 13 27 Complaints ................................................................................................................ 13
28 Disciplinary proceedings .......................................................................................... 13
Schedule 1—Repeals 14 1 Code of Conduct for Patents and Trade Marks Attorneys 2013................................ 14
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 i
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Preliminary Part 1
Section 1
Part 1—Preliminary
1 Name of code
This code is the Code of Conduct for Trans-Tasman Patent and Trade Marks
Attorneys 2018.
2 Commencement
This code commences on 23 February 2018.
3 Authority
This code is made under subparagraph 228(2)(r)(ia) of the Patents Act 1990 (Cth)
and subparagraph 231(2)(ha)(ia) of the Trade Marks Act 1995 (Cth), and in
accordance with the Arrangement between the Government of Australia and the
Government of New Zealand Relating to Trans-Tasman Regulation of Patent
Attorneys signed in March 2013.
4 Definitions
In this code:
ancillary business means a business providing services in relation to intellectual
property that are ancillary to the attorney professional services provided by a
registered patent attorney or a registered trade marks attorney and that are directed
to, or likely to be utilised by, a client of a registered attorney.
associated person means a person (including another registered attorney), other than
a staff attorney or a foreign-registered attorney, who does work for a registered
attorney under a contract or other arrangement, including a person who acts as the
agent or representative of the registered attorney for the purposes of the Patents Act
or the Trade Marks Act.
Board means the Trans-Tasman IP Attorneys Board.
client means the principal on whose behalf a registered attorney is acting.
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 a country or region other than Australia
or New Zealand, to do some or all of the following work:
(a) applying for patents, trade marks, designs or protection for plant varieties;
(b) obtaining patents, trade marks, designs or protection for plant varieties;
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 1
Preliminary Part 1
Section 4
(c)
plant varieties;
(d)
(e)
but no longer is, acting.
trade marks attorney.
ownership group means:
(a)
Act 2001; and
(b)
professions means:
(a)
(b)
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018
preparing applications or other documents for the purposes of the laws of that
country or region relating to patents, trade marks, designs or protection for
giving advice about the validity of patents, trade marks, designs or protection
for plant varieties;
giving advice about the possible infringement of patents, trade marks, designs
or protection for plant varieties.
former client means the principal on whose behalf a registered attorney once was,
guidelines means the guidelines for understanding and interpretation of this code as
published by the Board from time to time.
incorporated attorney means an incorporated patent attorney or an incorporated
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.
informed consent means, in relation to a client, consent given with knowledge of all
the information that is reasonably necessary and legally possible to be provided to
the client so that the client can make an informed decision.
two or more incorporated attorneys, and any incorporated ancillary business,
that constitute “associated entities” as that term is defined in the Corporations
two or more partnerships or other non-incorporated combinations of
registered attorneys, and any ancillary business, that would constitute
“associated entities” as that term is defined in the Corporations Act 2001 if
such entities were incorporated.
patent attorney director has the same meaning as in the Patents Act.
Patents Act means the Patents Act 1990 (Cth).
person has the meaning that it is given by the Acts Interpretation Act 1901 (Cth).
the patent attorney profession; and
the trade marks attorney profession.
registered attorney means a person to whom this code applies.
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.
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regulatory authority means a body:
(a) established by or under a law; or
(b) otherwise established by a government;
with which a registered attorney may deal with while doing work as a registered
attorney.
staff attorney means:
(a) an individual who is a registered patent attorney and employed by an
incorporated patent attorney; or
(b) 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 (Cth).
trade marks attorney director has the same meaning as in the Trade Marks Act.
5 Former Code of Conduct
This code replaces the Code of Conduct that was established by the Professional
Standards Board for Patent and Trade Marks Attorneys and registered on 23 October
2013.
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Overview Part 2
Section 6
Part 2—Overview
6 Application of code
This code applies to:
(a) a registered patent attorney; and
(b) a registered trade marks attorney.
7 Objective of code
The objective of this code is to explain the professional conduct required of a
registered attorney by setting out the standards of practice to which a registered
attorney is required to adhere.
8 Guidelines to code
(1) From time to time the Board may publish guidelines to assist registered attorneys
and their clients to understand this code and the conduct it covers.
(2) Any guidelines published by the Board are informative, are illustrative, are not
exhaustive, do not form part of this code and are not binding for the purposes of
interpreting this code.
9 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.
10 Administration of code
(1) The Board is responsible for:
(a) publicising this code to ensure widespread awareness of its purpose and
provisions; and
(b) implementing measures to ensure that registered attorneys are aware of this
code’s purpose and provisions; and
(c) conducting periodic reviews of this code’s effectiveness, and of the
procedures in this code, with a view to possible changes; and
(d) preparing annual and other reports relating to this code.
(2) This code is a legislative instrument for the purposes of the Legislative Instruments
Act 2003 and is available on the Federal Register of Legislation website
(https://www.legislation.gov.au/).
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Overview Part 2
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(3) The Board’s contact details are available on the Board’s website
(https://www.ttipattorney.gov.au/).
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Professional conduct Part 3
Section 11
Part 3—Professional conduct
11 Core obligations
(1) A registered attorney must act as a patent attorney or a trade marks attorney:
(a) in accordance with the law; and
(b) in the best interests of the registered attorney’s clients; and
(c) in the public interest; and
(d) in the interests of the registered attorney’s profession as a whole.
(2) 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.
12 Responsibility
(1) A registered attorney who is an individual is responsible for:
(a) the registered attorney’s own work, acts and defaults; and
(b) the work, acts and defaults of each associated person of the registered
attorney.
(2) A registered attorney who is a director is responsible for:
(a) the director’s own work, acts and defaults; and
(b) the work, acts and defaults of each associated person of the director; and
(c) the work, acts and defaults of each staff attorney employed by the
incorporated attorney of which the director is a director.
(3) A registered attorney that is an incorporated attorney is responsible for:
(a) the incorporated attorney’s own work, acts and defaults; and
(b) the work, acts and defaults of each director of the incorporated attorney; and
(c) the work, acts and defaults of each staff attorney of the incorporated attorney;
and
(d) the work, acts and defaults of each associated person of the incorporated
attorney.
13 Integrity
(1) A registered attorney must not act as a patent attorney or a trade marks attorney in
a way that is fraudulent, deceitful or knowingly misleading.
(2) A registered attorney must maintain standards of professional practice as a patent
attorney or a trade marks attorney that are courteous, ethical and well-informed.
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Professional conduct Part 3
Section 14
14 Competency
(1) A registered attorney must have appropriate competency for the work that the
registered attorney undertakes.
(2) A registered attorney must carry out the work that the registered attorney
undertakes with due skill and care.
15 Diligence
(1) A registered attorney must carry out the work that the registered attorney
undertakes in a timely manner.
(2) A registered attorney must:
(a) act in a timely manner on the instructions of a client or a prospective client;
or
(b) inform the client or prospective client in a timely manner of the registered
attorney’s inability to do so.
16 Communication
(1) Prior to undertaking any work for a client, a registered attorney must ensure that
the client is, or previously has been, clearly informed in writing of the following
matters:
(a) that the registered attorney is registered as a patent attorney, a trade marks
attorney or both, and is bound by this code; and
(b) that the registered attorney has appropriate competency to perform the work,
including by drawing on technical expertise; and
(c) the procedures, timing and estimated cost of doing the work; and
(d) whether the registered attorney is an incorporated company and, if it is,
whether the company is public or private; and
(e) where the registered attorney is a member of an ownership group – that fact
and the identity of the other members of that group.
(2) A registered attorney is not required to comply with paragraphs (1)(a), (b) and (c)
if:
(a) the client is also represented by a foreign-registered attorney and the
registered attorney is dealing with the client by dealing with the foreign-
registered attorney; or
(b) 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.
(3) A registered attorney is not required to comply with paragraphs (1)(d) and (e) if:
(a) the client is also represented by a foreign-registered attorney, the registered
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Professional conduct Part 3
Section 17
(b)
17 Disclosure
18 Confidentiality
consent of the client.
19 Loyalty
Client
the interests of a client.
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018
attorney is dealing with the client by dealing with the foreign-registered
attorney and the registered attorney has provided the information specified in
paragraphs (1)(d) and (e) to the foreign-registered attorney; or
the registered attorney has been requested to do work for the client by
another registered attorney, the other registered attorney continues to act for
the client in the work and the registered attorney has provided the information
specified in paragraphs (1)(d) and (e) to the other registered attorney.
(4) Where any of the matters specified in subsection (1) become materially different
from those that were, or that should have been, previously notified to a person to
whom the registered attorney is required by this section to notify them, the
registered attorney must clearly inform that person in writing of the changes.
Unless prohibited by section 18 or otherwise by law, a registered attorney that is an
individual must disclose to a client all information of which the registered attorney
is aware that is materially relevant to work being undertaken for the client.
Unless permitted or required by law, a registered attorney must not use or disclose,
or allow to be used or disclosed, confidential information obtained from or on
behalf of a client, a former client or a prospective client without the informed
(1) A registered attorney is a fiduciary in respect of the registered attorney’s dealings
with a client, and owes a duty of loyalty to a client.
(2) A registered attorney must not prefer the registered attorney’s own interests over
(3) Subject to subsection (4), a registered attorney must not prefer the interests of one
client over the interests of another client.
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Professional conduct Part 3
Section 20
(4) Subject to subsection (5), a registered attorney must not act for a client in a matter
knowing that the client’s interests in that matter are adverse to the interests of
another client of the registered attorney unless:
(a) both clients in writing have given informed consent to the registered attorney
acting in the matter; and
(b) where the registered attorney holds confidential information relevant to the
matter obtained from or on behalf of either client – the registered attorney
has established an effective information barrier in relation to the relevant
confidential information.
(5) A registered attorney must not act for two or more clients in the same matter
relating to a proceeding before a court, a tribunal, a like adjudicative body or an
intellectual property office where the registered attorney knows the clients’
interests are or are likely to be adverse.
Former client
(6) A registered attorney must not act for a client in a matter knowing that the client’s
interests are adverse to the interests of a former client unless:
(a) the registered attorney does not hold confidential information relevant to the
matter obtained from or on behalf of the former client; or
(b) where the registered attorney does hold confidential information relevant to
the matter obtained from or on behalf of the former client – the registered
attorney has established an effective information barrier in relation to the
relevant confidential information.
20 Conflicts
(1) A registered attorney must take all reasonable steps to avoid creation of a situation
giving rise to an actual conflict or the reasonable possibility of a conflict:
(a) between the registered attorney’s interests and the interests of a client; and
(b) between the interests of one client and the interests of another client.
(2) Upon becoming aware of a situation giving rise to an actual conflict or the
reasonable possibility of a conflict of the types described in subsection (1), a
registered attorney must, as soon as practicable, take all reasonable steps to
resolve the actual conflict or the reasonable possibility of a conflict.
21 Independence
(1) Where a registered attorney is a member of an ownership group, a client of any
member of the group of which the registered attorney is not independent is
considered to be a client of the registered attorney for the purposes of sections 19
and 20.
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Professional conduct Part 3
Section 22
(2)
attorney acting in the matter.
22 Termination of services
(a)
(b)
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018
For the purposes of subsection (1), a registered attorney that is a member of an
ownership group will not be regarded as independent of another member of the
group unless the registered attorney operates independently of that other member
in the provision to clients of attorney professional services.
(3) Notwithstanding subsection (2), a registered attorney that is a member of an
ownership group must not act for a client in a matter relating to a proceeding
before a court, a tribunal, a like adjudicative body or an intellectual property
office where the registered attorney knows that a client of another member of the
group is involved in the matter and that the clients’ interests are adverse unless the
registered attorney’s client in writing has given informed consent to the registered
If a registered attorney withdraws the registered attorney’s services, or ceases to act
for a client, the registered attorney must take all reasonable steps:
to inform the client of any actions necessary to maintain the client’s
intellectual property rights; and
to cooperate with the client and any new representative of the client to
ensure the client’s intellectual property rights are maintained during transfer
of responsibility.
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Practice management Part 4
Section 23
Part 4—Practice management
23 Ownership
(1) A registered attorney may be a member of an ownership group.
(2) Where a registered attorney is a member of an ownership group, that fact and the
identity of the other members of the ownership group must be clearly disclosed to
the public using means and words which can be reasonably expected to come to
the attention of the public and be understood by the public.
24 Funds
(1) 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.
(2) 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.
(3) A registered attorney must use money paid by a client only:
(a) for the purposes for which the client paid the money; or
(b) in accordance with any instructions given by the client before, during or after
the payment of the money.
(4) A registered attorney must, as soon as practicable, give to a client, or otherwise
deal with as instructed by a client, any refund due to the client.
25 Client property
(1) If a client or former client asks a registered attorney to return or make available to
the client a document, sample or other material:
(a) that is the client’s property; or
(b) to which the client may have access under an agreement between the
registered attorney and the client; or
(c) 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.
(2) A registered attorney is not required to comply with subsection (1) if the client has
not satisfied a lien imposed in accordance with the Patents Regulations 1991 (Cth),
the Trade Marks Regulations 1995 (Cth), the Patents Act 2013 (NZ) or otherwise
by law.
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Practice management Part 4
Section 26
26 Address
(1) A registered attorney must:
(a)
code; and
(b)
(c)
registered attorney.
Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018
have a current address at which notices can be served for the purposes of this
ensure that the Board is notified of the current address; and
notify the Board of a change of address within 14 days.
(2) The Board will act on the assumption that a notice served on a registered attorney
at an address notified to the Board under paragraph (1)(b) has been received by the
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Complaints and disciplinary proceedings Part 5
Section 27
Part 5—Complaints and disciplinary proceedings
27 Complaints
(1) A person or body may make a complaint to the Board, or provide information to
the Board, about the conduct of a registered attorney.
(2) A registered attorney must not:
(a) make a complaint to the Board, or provide information to the Board, under
subsection (1) for an improper purpose; or
(b) threaten to make a complaint to the Board, or provide information to the
Board, for an improper purpose.
28 Disciplinary proceedings
(1) The Board has the sole responsibility for commencing and conducting disciplinary
proceedings against a registered attorney.
(2) The Board can commence disciplinary proceedings against a registered attorney as
a result of information it receives or on its own initiative.
(3) The Board may commence proceedings before the Trans-Tasman IP 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.
(4) The Board is required to commence proceedings before the Trans-Tasman IP
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 professional misconduct.
(5) The Board may apply to the Trans-Tasman IP Attorneys Disciplinary Tribunal to
cancel or suspend the registration of an incorporated patent attorney or an
incorporated trade marks attorney in accordance with subregulation 20A.10(1) of
the Patents Regulations 1991 (Cth) or subregulation 20A.10(1) of the Trade Marks
Regulations 1995 (Cth), as the case may be.
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Repeals Schedule 1
Section 1
Schedule 1—Repeals
1
Repeal the instrument.
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Code of Conduct for Patent and Trade Marks Attorneys 2013
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