From 23 February 2018 changes to the Code of Conduct for patent and trademarks attorneys sees the introduction of greater transparency requirements surrounding the ownership of Australian patent attorney firms.
In the last three years some of Australia’s largest Australian patent attorney firms (having a combined market share of close to 70% in Australia) have been listed on the stock exchange or been 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.
- 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 revision of the Code of Conduct include concerns of conflict of interest, especially as it relates to the presence of different firms with competing interests owned by the same holding company.
The updated Code requires patent firms to inform their clients that the firm operates as an incorporated company and, if they are, whether they are 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 member firms must also inform their domestic and foreign clients, and the public, of that fact and also of the identity of all other firms that are members of the group. Added to this, the Code deals with conflicts of interest 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.
A copy of the Code can be found here. MBIP welcomes the new changes to the Code.
MBIP is a privately owned boutique IP firm that is wholly owned by people that work in the firm. We are 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.