Registered patent attorneys and incorporated patent attorney firms are expected to follow certain standards of professional behaviour. If you believe that an attorney or firm has fallen short of this standard, you may file a complaint with the Trans-Tasman IP Attorneys Board (TTIPAB).
Code of conduct
The Code of Conduct defines the standards of ethical and professional behaviour for registered attorneys. It is established and maintained by the the TTIPAB, and applies to:
- registered New Zealand and Australian patent attorneys
- registered Australian trade mark attorneys
- incorporated patent and trade mark attorney firms.
Any breaches of this code, or instances of professional misconduct or unsatisfactory professional conduct, are subject to a formal complaints and disciplinary process managed by the TTIPAB.
Code of Conduct for trans-Tasman Patent and Trade Mark Attorneys — Trans-Tasman IP Attorneys Board
The Code of Conduct — Trans-Tasman IP Attorneys Board
How to make a complaint
You can file a complaint with the TTIPAB in relation to a patent attorney’s behaviour that does not meet the given standards.
- Before making a complaint, you should first try to resolve the issue directly with the attorney.
- You can lodge a complaint if you are not able to resolve the issue with the attorney, or there are circumstances that prevent you from discussing this issue with them.
Your complaint must be filed a maximum of 5 years from when the offence was originally committed.
To lodge your complaint, you will need to contact the Board directly and provide certain requirements. The TTIPAB website provides more detail on these requirements and the process for handling the complaint.
How to lodge a complaint — Trans-Tasman IP Attorneys Board
Should the TTIPAB determine that there is significant evidence of professional misconduct, your complaint may be referred to the Trans-Tasman IP Attorneys Disciplinary Tribunal for determination.
You may also wish to consider contacting the New Zealand Law Society in relation to complaints regarding New Zealand lawyers.
New Zealand Law Society — New Zealand Law Society
Trans-Tasman IP Attorneys Disciplinary Tribunal
The Trans-Tasman IP Attorneys Disciplinary Tribunal (the Tribunal) is an Australian statutory body responsible for:
- conducting hearings in relation to the conduct of patent attorneys
- determining whether a registered patent attorney is guilty of professional misconduct or unsatisfactory professional conduct
- determining the appropriate sanction for a patent attorney who has been found guilty of misconduct or unsatisfactory professional conduct.
The Tribunal is a 3 person panel comprising an experienced legal practitioner, and 2 experienced registered (or formerly registered) patent attorneys appointed by the responsible Australian Minister. Where the Tribunal is conducting a hearing in relation to the conduct of a New Zealand patent attorney, the panel is required to include at least one experienced patent attorney from New Zealand.
Although the Tribunal is an Australian statutory body, it has been deemed to be an Australian court under section 152 of the Evidence Act 2006 and is therefore able to have jurisdiction over New Zealand residents. The Tribunal may, for example, serve subpoenas in New Zealand, sit in New Zealand and take evidence and receive submissions by telephone or video conference from New Zealand when sitting in Australia.
The Tribunal has also been declared to be a tribunal to which the Trans-Tasman Proceedings Act 2010 applies. This means that any directions or orders of the Tribunal may be recognised and enforced in New Zealand.
Section 152 of the Evidence Act 2006 — New Zealand Legislation
Trans-Tasman Proceedings Act 2010 — New Zealand Legislation
Where a New Zealand patent attorney is subject to a disciplinary hearing, their legal representative and any witnesses from New Zealand are able to appear remotely from New Zealand at a sitting of the Tribunal.
The Tribunal may also sit in New Zealand, and when it does so it has the same powers and protections as it would if it was sitting in Australia.
When sitting in New Zealand the Tribunal may:
- direct that the hearing or any part of the hearing be held in private
- require a person to leave the Tribunal
- prohibit or restrict publication of evidence or names of any party or any witness
- administer oaths in New Zealand.
Failure to comply with a direction or order of the Tribunal may be enforced by a Judge of the High Court of New Zealand in the same manner as if the direction or order of the Tribunal had been made by a Judge of the High Court. This includes the power to punish for contempt for not complying with a direction or order of the Tribunal.
Failure of a witness to comply with a subpoena from the Tribunal can result in the High Court issuing a warrant to arrest the witness and bring them before the court. The High Court may order the witness to pay a fine not exceeding $1,000 for failure to comply with the subpoena.
Reviews of decisions under the joint regime
Decisions of the Designated Manager, TTIPAB and Tribunal may be reviewed by the Australian Administrative Appeals Tribunal, upon request.
Furthermore, someone aggrieved may also seek judicial review of the decision in accordance with the Australian Administrative Decisions (Judicial Review) Act 1977. Applications for judicial review need to be made to either the Australian Federal Court or the Federal Circuit Court.
Australian Administrative Decisions (Judicial Review) Act 1977 — Australia Legislation
Australian Administrative Appeals Tribunal
The Administrative Appeals Tribunal (AAT) conducts independent merits review of administrative decisions made under Australian Commonwealth laws. In accordance with paragraphs 22.26 (2)(b), (c) and (d) of the Australian Patents Regulations 1991 (Cth), most decisions of the Designated Manager, the Board and the Tribunal may be reviewed on request by the AAT.
The AAT reviews a decision “on the merits”. This means that it will take a fresh look at the facts, law and policy relating to the decision and arrive at its own decision. The AAT has the power to:
- affirm a decision
- vary a decision
- set aside a decision and substitute a new decision
- remit a decision to the decision-maker for reconsideration.
Parties to AAT review may appeal a decision of the AAT to Federal Court or the Federal Circuit Court on points of law. Unlike the Tribunal, the AAT does not have the power to sit in New Zealand. However, New Zealanders may participate in AAT sittings in Australia by teleconference or video conference.
Australian Administrative Appeals Tribunal — Administrative Appeals Tribunal
Offences under the joint regime
There are a range of offences related to persons and companies who are not registered under the joint regime for carrying on business, practising, acting or holding themselves or their company out as a patent attorney or an agent for obtaining patents.
Offences also apply to partners of partnerships and limited partnerships carrying on business, practising or acting as a patent attorneys or patent agents, or describing or holding the partnership out as a patent attorney or an agent for obtaining patents.
Where an incorporated patent attorney firm is registered under the joint regime, it is an offence for the incorporated patent attorney firm to not have a patent attorney director (except for an initial 7-day grace period requiring notification to the designated manager).
Anyone convicted of committing any of these offences may be subject to a fine of up to $6,000 for individuals/ non-limited partnerships, or up to $30,000 for companies / limited partnerships.
Documents prepared by lawyers
It is an offence for a lawyer to prepare a patent specification or a document related to the amendment of a patent specification, or permit another person to represent that the lawyer is entitled to do so, unless the lawyer is:
- also a registered patent attorney
- acting under instruction of a registered patent attorney
- directed to do so by a court.
The penalty for being convicted of any of the above is a fine of up to $6,000.
Documents prepared by incorporated patent attorney firms and incorporated law firms
Neither an incorporated patent attorney firm nor an incorporated law firm may permit an employee, who is not a registered patent attorney, to prepare a patent specification or document related to the amendment of a patent specification unless:
- the employee does so under the instruction or supervision of a registered patent attorney
- the firm is directed to do so by a court.
The maximum penalty for being convicted of doing so is a fine of $30,000.
Documents prepared by a member of a partnership or limited partnership
A partner in a partnership, who is not a registered patent attorney, must not prepare a patent specification or document related to the amendment of a patent specification unless:
- the partner does so under the instruction or supervision of a registered patent attorney
- the partner is directed to do so by a court.
The maximum penalty for doing so is a fine of $6,000.
Past decisions made by the Tribunal are available on the TTIPAB website.
Past Tribunal Decisions — Trans-Tasman IP Attorneys Board