For the Health of the Economy and Patent System: Rationale and Scope of Patent Attorney Privilege
| DOI | 10.1093/jiplp/jpn206 |
| Date | 07 November 2008 |
| Pages | 23-32 |
| Year | 2008 |
| Published By | Oxford University Press |
For the health of the economy and patent
system: rationale and scope of patent
attorney privilege
Chris Dent, Elizabeth Hall, and Andrew Christie*
There exists, in some countries, a ‘patent attorney pri-
vilege’.
1
This privilege allows an actual or potential
holder of patent rights to withhold from a court com-
munications that it has had with its patent attorney.
2
This privilege therefore is an important aspect of the
patent system as it facilitates full and open communi-
cations between the two parties. It has, however, been
given scant consideration in the literature.
Further, concerns have been raised around the extent
of the privilege, both in Australia and elsewhere.
3
As a
result, there are moves afoot on the international stage
to reform its operation.
4
This article is the first to
explore the rationale for the privilege in order to see if
there is a sound basis upon which to found it. The jus-
tifications for other privileges recognized in jurisdic-
tions around the world are considered as a means of
exploring the public policies that may support the
patent attorney privilege. Before analysing such justifi-
cations, it is necessary to understand the role of the
patent attorney in the patent system and the nature of
the privilege itself.
Role of patent attorneys in the patent
system
In the first half of the nineteenth century, two different
skills were required to obtain a patent: those involved
with obtaining the patent deed
5
and those involved
with the preparation of the specification and drawings
to be filed within the time specified in that deed.
6
Those who undertook the former task—‘patent
agents’—included officials employed in the offices
involved in the granting procedure. The latter task was
entrusted to those with technical qualifications, usually
in engineering, a group who referred to themselves as
‘specifiers’. Generally speaking, at that time, ‘since
* Senior Research Fellow, Intellectual Property Research Institute of
Australia (IPRIA); Senior Lawyer, Australia and New Zealand Banking
Group Limited; Davies Collison Cave Professor of Intellectual Property,
Melbourne Law School. Email: c.dent@unimelb.edu.au
1 The UK, for example, has a patent agent privilege (s 280 Copyright,
Designs & Patents Act 1988) as does Australia (s 200(2) Patents Act 1990
(Cth)); patent agents who appear before the EPO also have a privilege
(Art 134a(1)(d) European Patent Convention). There is, however, no
equivalent privilege in Switzerland. For a more complete list of the
countries that do, and do not, recognize a patent attorney privilege, see E
Hall et al., ‘Patent Attorney Privilege: Rationale, Current Concerns and
Avenues for Reform’, Intellectual Property Research Institute of Australia
Report 01/07 (2007).
2 The use of the term ‘patent attorney’ here follows the Anglo-Australian
understanding. That is, a patent attorney (otherwise known as a patent
agent) is not legally qualified and cannot provide legal advice to her or
his client.
3 The concerns in Australia stem, to a large extent, from a Federal Court
decision (Eli Lilly v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573)
in which the court interpreted s 200(2) narrowly, excluding from its
application communications with foreign patent attorneys.
4 A conference was held in May 2008 that considered concerns around the
privilege. The conference was organized by the World Intellectual
Property Organization in co-operation with the International Association
for the Protection of Intellectual Property (AIPPI).
5 For one early commentator, patent agents did not exist as a profession
‘before the year 1820’: A Newton, ‘On Patent Agency: Its Origins and
Uses. A Retrospective Review’ (1891) 9 Proceedings of the Chartered
Institute of Patent Agents 125, Society of the Arts 494; 589; and 670.
6 B Hack, A History of the Patent Profession in Colonial Australia (Annual
Conference of the Institute of Patent Attorneys of Australia, Brisbane,
Queensland, 29– 31 March, 1984) 2.
Journal of Intellectual Property Law & Practice, 2009, Vol. 4, No. 1 ARTICLE 23
#The Authors (2008). Published by Oxford University Press. All rights reserved.
Key issues
†There are variations in the extent of patent attor-
ney privilege in jurisdictions around the world
with some countries not recognizing the privilege
at all.
†Although there are a number of justifications for
the other ‘relational’ privileges recognized in law
(such as client– legal privilege, doctor– patient
privilege, and cleric– communicant privilege),
there has been no analysis of the rationale for
patent attorney privilege.
†This article considers the justifications for the
privilege and suggests that, given the need for
clients to have full and frank advice for the effec-
tive operation of the patent system, the privilege
is justified and should not be unduly limited in
its operation.
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