Expand safe harbour for patent and trade marks attorneys from prosecution under state and territory legal profession acts

Issue summary

Under the various State and Territory Legal Profession Acts, it is a crime for anyone other than a legal practitioner to 'engage in legal practice' without some relevant exception applying. Exemptions include acting under the authority of a law of the Commonwealth, such as for patent and trade mark attorneys.

The provisions setting out what patent or trade mark attorneys may and may not do might not be sufficiently clear. This may put attorneys at risk of being penalised for trespassing on the legal practitioners' reserve. The areas of uncertainty are specifically with work in the trade marks and designs fields, advice on IP-related matters, and the right of registered attorneys to use the expression "attorney" to describe themselves.

Review of the scope of patent and trade mark attorney's practice rights could determine if clarification is required.

IP Australia is considering recommendations made by Dr Vivienne Thom in the ‘Independent report on the effectiveness of the Trans-Tasman regulation of patent attorneys and related matters’.

Recommendation 20 states:  

‘IP Australia should clarify the extent to which individuals who are not legal practitioners can do trade marks work in light of the reserve of legal practitioners at a state or territory level, and inform applicants and registered attorneys of the outcome of this review. Depending on the outcome of this exercise, IP Australia should also clarify the current provisions relating to the scope of work that can be done by trade marks attorneys.’ 

There is currently uncertainty about who might provide trade mark services for gain in light of the reserve of legal practitioners. This should be resolved.

History

• On hold 4 September 2017
• Closed August 2020
• Re-opened and placed on hold 22 November 2023

Comments

IP Australia is monitoring this issue, and considering recommendations made by Dr Vivienne Thom in the ‘Independent report on the effectiveness of the Trans-Tasman regulation of patent attorneys and related matters’.