The Professional Standards Board (PSB) administers the regulatory and disciplinary regimes for Patent and Trade Mark attorneys in Australia and includes a Code of Conduct to which all Australian Patent and Trademarks attorneys are bound. The PSB recently released a new draft Code of Conduct for Patent and Trade Marks Attorneys 2013 for public consultation. Edwin Patterson takes a closer look at the proposed code.
Unlike previous codes administered by the PSB, the new code of conduct will become a statutory instrument. This code is also intended to be adopted as the code of conduct the forthcoming Tran-Tasman patent attorney regime reported in our earlier blog post for the IP Amendments Bill 2013 (#5).
According to the PSB, the primary objectives of the revisions are to have a code that:
- makes clear to Attorneys the standard of behaviour that is expected of them, and aligns it where appropriate with behaviours expected of other professionals,
- makes clear to users of Attorney services what they can expect of individual and incorporated Attorneys, and
- provides a framework within which the Board can readily determine whether any notifications made to it which complain of the conduct of an Attorney should form the basis of referral of an Attorney to the Disciplinary Tribunal.
The draft Code of Conduct
The draft Code contains considerably more detail than the current Code of Conduct (2008).
The PSB has indicated that a number of changes borrow from similar provisions in other industry-based codes, for example, those of the Institute of Patent and Trade Marks Attorneys of Australia (IPTA) and the New Zealand Institute of Patent Attorneys, the Australian Solicitors’ Conduct Rules (from the Law Council of Australia), the New Zealand Lawyers and Conveyancers Act (Lawyers: Conduct and Client Care) Rules 2008 and the New South Wales Medical Practice Amendment Act 2008 No 27.
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The new draft code now includes:
Core Obligations of an Attorney
Section 11 which now specifies the core obligations for an Attorney specifying the ethical obligations and expected conduct of an Attorney. Subsections (1) and (2) require an obligation to the law, clients, public interest and the profession. This mirrors the IPTA Code of Ethics (which all POF attorneys are members). Subsection (3) further specifies that (a) an attorney must not act in a way that is fraudulent or deceitful and (b) maintain standards of professional practice that are courteous, ethical and well informed. Interestingly, the code includes an example which states disrespect or discourtesy to government officials or another attorney would breach subsection (3).
The PSB has made particular note of “whistleblower” provisions set out in subsections (5), (6) & (7) which compel an attorney to make a written report on any attorney suspected of professional misconduct or unsatisfactory professional conduct. The PSB has noted that they are mindful that in a small profession, there is both risk of at least perceived cronyism or protectionism, but also of actual retribution against an attorney who makes a report under these subsections. They have requested constructive feedback on these subsections to determine whether these subsections should be retained, and if so, in what form.
Appropriate skills and Knowledge
Section 12 requires a registered attorney to have the appropriate knowledge, skills and qualifications for work performed. Examples are provided in the draft code that indicate that attorneys should not perform work where there is a gap in their knowledge, skills and qualifications, is outside their main practice area or appear before a court if not entitled. The PSB has indicated that ‘unfamiliarity’ with a field of science or technology is not intended to equate to a lack of formal qualification, but can be a result of experience.
This provision appears to be common sense. For example, attorneys with mechanical engineering background are not typically experienced or qualified for drafting biotechnology patent specifications.
Candid Information Disclosure to New and Existing Clients
Sections 13 and 14 will have the largest effect of the day to day practice of the patent and trade mark attorney profession and its interaction with new and existing clients. These sections are intended to ensure an attorney’s clients are informed that the attorney has the required qualifications, knowledge and skill to perform the work and is aware of the cost and implications of that work.
Section 13 requires a registered attorney to provide to new clients written advice of:
- registration status, relevant knowledge, skills and qualifications;
- a cost estimate for the particular work; and
- the implications of having the registered attorney perform the work for the new client, in terms of procedures, cost and timing.
Section 14 require similar written disclosure to existing clients for new work which is materially different to previously performed work and is outside of previous arrangements.
In addition, subsection 14(4) requires an attorney to provide draft patent specifications where practicable. Subsection 14(5) requires an attorney to give, return or make available to a client a document, sample of other material that is the client property or may have access to under an agreement.
The PSB has highlighted that these provisions are no more onerous than similar provisions which apply, for example, to practising solicitors with whom many Attorneys work closely.
Conflict of Interest
Section 15 now sets out detailed conflict of interest provisions and requirements for Attorneys. It is noted that conflict of interest has been the subject of recent patent and trade mark disciplinary tribunal decisions, for example Re Howard Schulze & Re Phillip Boehm (2012), and resulting appears to require specific guidance.
Practice Requirements
Sections 16 to 21 provide practice requirements including requiring an attorney to act promptly (section 16), pay costs in a timely manner (section 17), keep and account for the funds of a client (section 17), not misuse client or confidential information (section 20), requiring the attorney to inform clients of actions to maintain IP rights if their services are withdrawn (section 21).
Obligations of attorneys
Sections 22 to 24 specify the various obligations of registered attorneys and associated persons (persons who perform work for an attorney) (section 22), director patent attorneys and an incorporated attorneys (Sections 22 and 23) (which relate to the directors and incorporated entity of an incorporated patent attorney firm, now allowable under the Patents Act 1990).
Submissions
Submissions are being sought on the draft code. Comments and suggestions need to be submitted to the PSB via PSB.CodeOfConduct@ipaustralia.gov.au by no later than Friday 12 July 2013.