A privilege is an “exemption from the normal obligation of a citizen to provide the judicial arm of the state with the information and documents which are required for determination of litigation”.1
The current Australian Patents Act provides privilege to communication between Australian registered patent attorneys and their clients. The provision reads:
(2) A communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such communication, are privileged to the same extent as a communication between a solicitor and his or her client.2
Problems in the abovementioned provision came to light in 2004 by the decision in Eli Lilly v Pfizer Ireland Pharmaceuticals3. Particularly when it was held that the provision does not privilege the communication between clients and foreign patent attorneys. In other words, the patent attorney privilege is “confined to communications with patent attorneys registered as such in Australia” and did not extend to communications with any patent attorney/agent anywhere in the world.4 Communication between clients and foreign patent attorneys may, therefore, be ordered to be produced by an Australian court. Such court order could be detrimental to the client’s case.5
This problem is predominantly applicable to overseas clients who are foreign patent holders in Australia because it is likely that their initial communication relating to patenting the invention was with a foreign patent attorney. Initial advice generally includes crucial information on whether and why the invention is patentable, or otherwise. In a case for revocation of a patent, if this information is made available to the plaintiff (seeking revocation of the patent), it could have disastrous consequences to the patent holder.
In order to remove this uncertainty, from 15 April 2013, client attorney privilege in Australia will be extended to foreign attorneys through the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
The Raising the Bar Act repeals the abovementioned provision, and introduces the following provisions in its stead:
(2) A communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client.
(2A) A record or document made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a legal practitioner providing legal advice to a client.
(2B) A reference in subsection (2) or (2A) to a registered patent attorney includes a reference to an individual authorised to do patents work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.
The new provisions expand the definition of ‘patent attorney’ to include, in addition to Australian registered patent attorneys, an individual authorised to do patents work under the law of another country or region. The new privilege provision is intended to capture communication between clients and foreign patent attorneys/agents who are authorised to perform work similar to the work done by their Australian counterparts.6
The amendment brings certainty to clients that advice sought from overseas patent attorneys would be treated in the same way as that from Australian registered patent attorneys.
Additionally, the communication, record or document must be for the ‘dominant’ purpose of a patent attorney providing intellectual property advice in order for the communication, record or document to attract the privilege. The wording mirrors that used in the Evidence Act, which governs privilege for communication between clients and lawyers. The amendment has been included so that the privilege provision applies in the same way and to the same extent for patent attorneys as is does for lawyers.7
Whilst the Australian law provides that a patent attorney can assert privilege to prevent access to confidential document (if it was created for the dominant purpose of a patent attorney providing intellectual property advice to a client) by a third party, the privileged documents must be disclosed if the privilege is expressly or impliedly waived. The question whether privilege will be waived is one of fact. Therefore, it is incorrect to assume that privilege will apply to all communication between patent attorneys and clients, despite the provision.
A recent case sheds light on the question whether and in what circumstances privilege may be waived in relation to communication with expert witness (in patent litigation).
In Bristol-Myers Squibb v Apotex (No 3)8, an experiment was conducted to test Apotex’s allegation that claims of Bristol-Myers Squibb’s (BMS) patent were invalid in light of certain prior art. The experiment was conducted by Apotex’s expert and observed by BMS’ expert. After the experiment, BMS’ expert swore an Affidavit setting out the observations of the experiment. Apotex sought an order that BMS provide the notes created by BMS’ expert during the experiment. BMS argued that the notes were protected by legal privilege. However, the court held that privilege in the notes had been waived on the filing of the Affidavit. Therefore, BMS was ordered to provide the notes to Apotex.
Therefore, the present Australian position on privilege with respect to expert witness is that if an Affidavit is filed by the expert, any materials used by the expert to create the affidavit may not be protected by client attorney privilege. Consequently, when working with experts it is advisable to assume that all communication/records created by an expert witness may not attract client attorney privilege in Australian courts.
Whilst the Australia client – patent attorney privilege will be extended to communication between clients and their foreign patent attorneys, it is important to note that not all communication/records may be privileged (such as in the Bristol-Myers Squibb v Apotex case described above). Therefore, it is advisable to be cautious that privilege may be expressly or impliedly waived, and create communications/records accordingly.
by Shriraj Takle
 Heydon J, Cross on Evidence (6th Australian ed, Butterworths, 2000) p 664
 Section 200(2), Australian Patents Act 1990
 Eli Lilly v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573
 Kennedy v Wallace (2004) 142 FCR 185
 Hall E, et al ‘Patent attorney privilege in Australia: Options for reform’ 20 AIPJ 178, 188
 Explanatory Memorandum for Intellectual Property Laws Amendment (Raising the Bar) Act 2012
 Bristol_Myers Squibb Company v Apotex Pty Ltd (No 3)  FCA (23 November 2012)