New Zealand's new Evidence Act 2006 came into effect on 1 August 2007. There are significant consequences for patent attorneys practicing both in NZ and abroad, with the net effect being the provision of an extensive patent attorney privilege against discovery during court proceedings.
Prior to the new Act, patent attorney privilege in NZ was restricted to advice relating to any granted or pending rights in a patent, design, or trademark, irrespective of whether such advice related to a question of law.
NZ courts (Whangapirita v Allflex (1991) 5 PRNZ 151) had previously assumed a largely restrictive approach to patent attorney/client communications in which the only way to be entirely sure such communications would not be compromised was if the patent attorney was also a practicing solicitor and thereby able to attract legal professional privilege.
Under s.54 of the new Act, privilege may now be claimed by any local or foreign practitioner whose function at least partly corresponds with that of a registered patent attorney, for client communications relating to information or advice concerning "intellectual property", which is itself defined broadly in s.54(3) to extend as far as "..rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields".
The scope of communications covered by patent attorney privilege under the new Act provides recognition of the commercial realities faced by patent attorneys, who must be able to freely advise clients relating to all conceivable aspects of their IP protection strategy.
The new provisions should serve to avoid problems similar to those encountered in Australia. For instance, in Eli Lilly v Pfizer 2 (2004) 61 IPR 292, the Australian Federal Court found, somewhat restrictively, that communications between a foreign patent attorney, who was not a solicitor, and their client in relation to a foreign case did not attract privilege in Australia.
A further development brought about by the new Act is to extend the extent to which NZ patent attorney privilege now protects communications by foreign patent attorneys. Privilege now also covers communications between a NZ client and an overseas practitioner where such practitioner's functions at least partly correspond with those of a NZ patent attorney. Therefore, Australian patent and trademark attorneys, barristers and solicitors clearly attract such privilege by virtue of the Trans Tasman Mutual Recognition Act 1996.
As all qualified patent attorneys of Shelston IP are dualregistered in Australia and New Zealand, clearly patent attorney privilege extends to all of our communications with NZ clients.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
