Under Australian law, patent attorneys and trade marks attorneys have a statutory right of privilege that closely mirrors legal professional privilege afforded to lawyers. This privilege is codified in section 200 of the Patents Act 1990 (Cth) and section 229 of the Trade Marks Act 1995 (Cth).
This right of privilege applies to communications and documents made for the dominant purpose of providing IP advice. Such communications are protected “in the same way, and to the same extent” as those between a lawyer and client for legal advice purposes. This means they cannot be compelled to disclose this advice during litigation.
The scope of this privilege includes advice on patents, trade marks, designs, plant breeder’s rights, and related IP matters. The privilege also covers work product created for litigation purposes when attorneys assist lawyers in existing or anticipated litigation.
Importantly, the right of privilege extends to foreign patent and trade marks attorneys who are authorised under the law of another country to provide similar IP advice. However, other countries may not necessarily afford reciprocal rights of privilege to advice provided by Australian attorneys.
Rights of privilege can be a complex issue, and IPTA recommends you discuss these rights and their ramifications (and whether they apply in the particular circumstances) with any IP attorney before disclosing any confidential information.