Patent Attorneys - patent attorney's privilege - s. 134 of the Patents Act 1952 and s. 135 of the Trade Marks Act 1955 - whether the privileges given by s. 134 of the Patents Act are limited to communications passing between patent attorneys and their clients in the course of the conduct of activities under the Patents Act, or might also extend to activities under the Trade Marks Act which are conducted by patent attorneys - whether the privilege conferred by s. 134 (1A) of the Patents Act attaches only to communications between a patent attorney and his client or extends to third party communications - whether communications by a patent attorney to his client for the purpose of advice as to the availability of registration of certain trade marks are privileged - whether searches and inquiries conducted by a patent attorney on behalf of a client are privileged.

Wilden Pump Engineering Co. v Fusfeld (1985) FSR 159

Re Dormeuil Trade Mark (1983) RPC 131

Imagic v Futuretronics Australia Pty. Ltd. (1984) AIPC 90-125

Sepa Waste Water Treatment Pty. Ltd. v J.M.T. Welding Pty. Ltd. (1986) 6 NSWLR 41

Trade Practices Commission v Sterling [1979] FCA 33; (1979) 36 FLR 244

the Applicants: L.G. Foster and

R.W. Webb instructed by

Messrs. Baker & McKenzie

Counsel and Solicitors for R.V. Gyles QC, D K Catterns

the Respondent: and J.V. Nicholas instructed

by Messrs Allen Allen & Hemsley

On 20 September 1989, the solicitors for the applicants, Pfizer Pty. Limited and Pfizer Incorporated, caused to be issued a subpoena for the production of certain documents to the Court on 22 September 1989. On that day, the documents were produced but the question of any claim of privilege was reserved and this has been argued this morning.

2. The subpoena in question was addressed to Mr. David Griffiths of Messrs. Spruson & Ferguson, Patent Attorneys. Mr. Griffiths has been a principal of that firm since 1 July 1981, and has been a registered patent attorney since 6 January 1981.

3. The documents produced in response to the subpoena fall into four categories, the third and fourth of which are categories in respect of which no claim for privilege is made. Nothing further need be said concerning them. The first and second categories are described by the solicitor who produced them to the Court as follows:

(i) documents which constitute or record

communications between Mr. Griffiths and the

Warner Lambert Company concerning the

availability for registration of certain

trade marks or the application by that

company for a trade mark, being matters in

relation to which his firm was instructed by

the Warner Lambert Company, and

(ii) documents which constitute and record the

results of searches and inquiries conducted

by Messrs. Spruson & Ferguson upon

instructions from the Warner Lambert

Company, concerning the availability of

various trade marks.

4. Part XV of the Patents Act 1952 ("the Patents Act") deals with the registration of patent attorneys and contains provisions controlling and professional activities of those persons. Section 134 provides:

"134. (1) A patent attorney -

(a) is entitled to prepare all

documents, transact all

business and conduct all

proceedings for the purposes

of this Act; and

(b) has such other rights and

privileges as are prescribed.

(1A) A communication between a patent

attorney and his client is privileged

to the same extent as a communication

between a solicitor and his client.

(2) Nothing in this section authorizes a

patent attorney to prepare a document

which is to be used from or filed in

a court or to transact business or

conduct proceedings in a court."

5. The documents presently in question do not relate to activities conducted for the purposes of the Patents Act. However, the matter is taken further by sub-s. 135 (1) of the Trade Marks Act 1955 ("the Trade Marks Act") which states:

"135. (1) Subject to section 138, a person

shall not, for gain -

(a) apply for or obtain the

registration of a trade mark;

(b) prepare, or cause to be lodged

at the Trade Marks Office, or

at a sub-office of the Trade

Marks Office, a document

necessary for obtaining or

opposing the registration of a

trade mark; or

(c) give advice as to the validity

of the registration of a trade

mark or as to the infringement

of a trade mark,

unless he is -

(d) a legal practitioner;

(e) a registered patent attorney;

(f) . . .

(g) . . .

(h) . . .

(i) . . . "

Section 138 deals with the carrying on of the business of a deceased patent attorney, and is not here relevant. Section 136 deals with the privileges of patent attorneys. It states:

"136. (1) A patent attorney -

(a) is entitled to prepare

documents, transact business

and conduct proceedings for

the purposes of this Act; and

(b) has such other rights and

privileges as are prescribed.

(2) Nothing in this section authorises a

patent attorney to prepare a document

which is to be issued from or filed

in a court or to transact business or

to conduct proceedings in a court."

6. It is clear, as the common law now stands, there would be no basis for the claim of privilege by Mr. Griffiths. The matter was dealt with by the English Court of Appeal in Wilden Pump Engineering Co. v Fusfeld (1985) FSR 159. It was there submitted that where legal advice is sought in confidence from a qualified legal adviser in his professional capacity, privilege may be claimed for communications made for that purpose and, secondly, that "a qualified legal adviser" is one who is officially recognised by the competent authorities in the United Kingdom or a foreign State as being a member of a profession of persons fit to advise on the branch of the law in respect of which the advice in question is sought. The English Court of Appeal rejected these submissions. An earlier decision to like effect was that of Nourse J. in Re Dormeuil Trade Mark (1983) RPC 131.

7. The position in the United Kingdom at the time of this litigation was qualified by legislation then found in s. 104 of the Patents Act 1977 (UK) (since replaced by s. 280 of the Copyright, Designs and Patents Act 1988 (UK)). Section 104 applied (i) to communications made for the purpose of any pending or contemplated "patent proceedings", being either a communication between the patent agent of a party to those proceedings and that party or any other person, and (ii) to communications between a party to those proceedings and a person other than his patent agent made for the purposes of obtaining, or in response to a request for, information which that party was seeking for the purpose of submitting it to his patent agent. The term "patent proceedings" as used in s. 104 of the British Act was defined in sub-s. (4) as meaning proceedings under that statute or any of the relevant conventions, namely the European Patent Convention, the Community Patent Convention and the Patent-Cooperation Treaty. Section 104 did not extend to Scotland; special provision in that behalf was made in s. 105.

8. The first question is whether a different result applies in Australia, bearing in mind the terms of sub-s. 134 (1A) of the Patents Act, and the lack of any further provision to the same immediate effect in s. 136 of the Trade Marks Act.

9. There are two decisions of the New South Wales Supreme Court which bear upon the question. The first is the decision of Master Cohen (as his Honour then was) in Imagic v Futuretronics Australia Pty. Ltd. (1984) AIPC 90-125. That was a case in which privilege successfully was claimed in respect of trade mark matters. The other decision is that of McLelland J. in Sepa Waste Water Treatment Pty. Ltd. v J.M.T. Welding Pty. Ltd. (1986) 6 NSWLR 41. His Honour held privileged a communication between a patent attorney and his client in the course or for the purpose of giving advice upon questions of alleged infringement of a registered design. His Honour said (at p 43 of the report):

"In my opinion there is insufficient

reason to read into the Patents Act

(Cth), s. 134 (1A), any express

limitation to the effect that it applies

only to communications in the course or

for the purposes of the activities of

patent attorneys for which express

authority is found in that or other

legislation. I consider that the

subsection applies to any communications

between a patent attorney in his capacity

as such and his client which would be

privileged if it were a communication

between a solicitor in his capacity as

such and his client.

On the evidence before me and having

regard to the statutory context to which

I have referred, I see no reason to doubt

that the giving of advice upon questions

of alleged infringement of a registered

design is within the legitimate

professional activities of a patent

attorney and, therefore, that a

communication between a patent attorney

and his client in the course or for the

purpose of the giving of such advice is a

communication between a patent attorney

in his capacity as such and his client."

10. There is an obvious practical utility in following decisions of this character given by a Court of concurrent original jurisdiction. In any event, I should follow the reasoning in McLelland J.'s judgment because, with respect, it appears plainly correct.

11. Accordingly, the claim to privilege in respect of the two classes of documents which I have described will be upheld, subject to any questions which arise as to whether the privilege, granted that it exists as a matter of principle in this type of case, is properly applicable here.

12. Mr Sperling QC, who appears to seek to uphold the subpoena, submits that the documents falling within the second class are wholly outside the ambit of the privilege provided for patent attorneys, because sub-s. 134 (1A) of the Patents Act provides that the privilege attaches only to a communication between a patent attorney and his client, and not to any document which is not such a communication. He points out that whilst legal professional privilege may extend to third party communications, sub-s. 134 (1A) is so drawn as to confer a narrower privilege upon patent attorneys.

13. Further, Mr Sperling submits the privilege does not extend to documents in the first class. There is a limitation, namely that the privilege attaches only to communications made incidental to the functions referred to in sub-s. 135 (1) of the Trade Marks Act, and sub-s. 136 (1) of that Act. The activities there described do not include, for example, the giving of advice as to the registrability of proposed trade marks.

(After submissions by counsel, his Honour

granted leave for the filing of further

affidavit evidence in support of the

privilege claimed. This was done on 27

September 1989. On that day, after

hearing further submissions from counsel,

his Honour continued as follows.)

14. I ruled yesterday, in conformity with two decisions of the New South Wales Supreme Court, that the privileges given by s. 134 of the Patents Act were not limited to communications passing between patent attorneys and their clients in the course of the conduct of activities under that statute. I ruled that the privilege might also extend to communications arising out of instructions given in respect of matters under the Trade Marks Act 1955 which might be conducted by patent attorneys.

15. However, the objection was then taken that even so understood the privilege conferred is not of sufficient width to cloak the materials involved here. It is apparent that the patent attorney was retained to advise as to the availability for registration of certain trade marks. That activity is not one of the activities which, under pain of penalty, a person is forbidden by sub-s. 135 (1) of the Trade Marks Act from conducting unless he is, inter alia, a registered patent attorney.

16. What is in terms not forbidden to a registered patent attorney is the application for and obtaining of registration of a trade mark: para. 135 (1) (a). The only reference to giving advice is in para. 135 (1) (c). That permits the giving of "advice as to the validity of the registration of a trade mark or as to the infringement of a trade mark". It is submitted that that specific reference in para. 135 (1) (c) to the giving of advice is to be treated as excluding from the permitted area the giving of advice in relation to applications for registration of a trade mark.

17. However, there was, in my view, a need for specific reference to the giving of advice as to validity and infringement in the light of the provisions of s. 136 of the Trade Marks Act. On the one hand, this states that a patent attorney is entitled to prepare documents, transact business and conduct proceedings for the purposes of the Act, but on the other states that a patent attorney is not thereby authorised to prepare a document which is to be issued from or filed in a Court, or to transact business, or to conduct proceedings in a Court. When these provisions are read with sub-s. 135 (1), it is apparent that whilst a patent attorney may not prepare a document which is to be issued from or filed in a Court or to transact business, or conduct proceedings in a Court relating to expungement or infringement, nevertheless he may give advice as to validity of the registration of a trade mark, or as to the infringement of a trade mark. Where the activity in question concerns application for registration of a trade mark, the entitlement of a patent attorney under s. 136 to prepare documents, transact business and conduct proceedings for the purposes of the Trade Marks Act, would, as an ordinary and necessary incident thereof, carry with it an entitlement to give advice in relation to the taking of those steps.

18. It follows that the subpoenaed documents identified as falling within the first category, namely documents which contain communications between Mr. Griffiths and the Warner Lambert Company concerning the availability for registration of certain trade marks, or the application by that company for a trade mark, would be privileged pursuant to s. 134 (1A) of the Patents Act, and I so rule.

19. There remains the second category, which was compendiously described as documents which constitute or record the results of searches and inquiries conducted by Messrs. Spruson & Ferguson concerning the availability of various trade marks, upon instructions given to Mr. Griffiths of Messrs. Spruson & Ferguson by his client, the Warner Lambert Company.

20. It is plain enough that, on ordinary principles, were it not for the particular form of the language of sub-s. 134 (1A) of the Patents Act, documents prepared with a view for use in giving advice of this type by a solicitor to his client would be protected. That would be so even if in fact the document had not been so used. The authorities are discussed by Lockhart J. in Trade Practices Commission v Sterling [1979] FCA 33; (1979) 36 FLR 244. As the review of the authorities by Lockhart J. makes plain, the privilege between solicitor and client certainly extends to much more than communications between solicitor and client. However, all that is protected under sub-s. 134 (1A) is communications between a patent attorney and his client, and the authorities to which I have referred are not, in my view, therefore applicable.

21. In the affidavit filed in Court today in support of the privilege claimed, the documents falling in what I have identified as the second category are further described as comprising:

(i) a one page computer print out of a trade

marks search caused to be conducted by

Messrs. Spruson & Ferguson in the course of

that firm's acting for the Warner Lambert

Company; the search was conducted to

ascertain the status of a pending application

for registration of a trade mark;

(ii) 81 pages of "computer generated material"

recording the results of searches conducted

by Messrs. Spruson & Ferguson of registered

trade marks and applications for registration

of trade marks,

(iii) a two page document brought into existence by

Messrs. Spruson & Ferguson for the purpose of

conducting the searches embodied in the above

"computer generated material".

22. It follows from what I have said that these documents are not within the ambit of the privilege conferred upon Mr Griffiths, and that they should be produced.