Changes to the code of conduct for patent and trademark attorneys

From 23 February 2018 changes to the Code of Conduct for Patent and Trade Marks attorneyensure greater transparency of ownership of Australian patent attorney firms.

The changes to the Code appear to be a significant reason for the absorption of two of Brisbane’s largest patent attorney firms (Fisher Adams Kelly Callinans and Cullens) into Sydney based firm Spruson and Ferguson, effective July 2018. All three firms are owned by IPH Limited. The updated Code imposes new obligations on firms which are owned by the same listed company that could be perceived to be operating independently.

In the last three some of Australia’s largest Australian patent attorney firms have been listed on the stock exchange or acquired by publicly listed companies. This means that almost 70% of the market share of Australian patent filings is controlled by three publicly listed companies:

  • Intellectual Property Holdings (IPH) Limited, owner of Spruson & Ferguson (Australia, China, Singapore & Hong Kong), Fisher Adams Kelly Callinans, Pizzeys, Cullens and AJ Park (NZ).
  • Xenith IP Limited, owner of Shelston IP, Watermark and Griffith Hack.
  • Qantm IP Limited, owner of Davies Collison Cave and Freehills Patent Attorneys

Factors that led to the Code of Conduct being revised included concerns of conflict of interest, especially as it relates to commonly owned firms representing clients with competing interests. The Trans-Tasman IP Attorneys Board, which regulates the patent attorney profession in Australia and New Zealand is the official body responsible for issuing the updated Code.

The updated Code requires patent firms to let clients know if the firm operates as an incorporated company and, if so, whether the firm is publicly or privately owned.  If the patent firm is a member of a commonly owned group of firms, such as being owned by a publicly listed holding company, the group members must also inform their domestic and foreign clients, and the public, of that fact and also of the identify of all other members of the group. Added to this, the Code specifies how conflicts of interest can arise between related firms. The Code treats members of a group of related firms as having a single body of clients.  Conflict of interest must be considered within and across these firms – a conflict of interest arises if related firms act for clients on opposing sides of proceedings, unless the client provides written consent to the involved attorneys.

The Guidelines explain that ‘client-facing’ attorney professional services such as the provision of advice and the prosecution of applications should not be provided by employees common to multiple firms if those firms want to remain as independent operations and avoid cross-firm conflicts. The Guidelines also caution firms to avoid the use of a common database, where attorneys from one firm can access client confidential information of another firm, to remain as independent operations.

MBIP is privately owned boutique IP firm that is independent and not part of any listed entity that owns multiple firms. We provide IP services for patents, trademarks and designs in Australia and New Zealand.

A copy of the Code can be found here. MBIP welcomes the new changes to the Code.