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
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
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).