IP Australia consults on incorporation of patent and trademark attorneys

IP Australia is consulting on the preferred incorporation model for patent and trademark attorneys following discussions with peak representative organizations.

Currently, the Patents Act 1990 prevents a company from carrying on business as a patent attorney firm. The Trademarks Act 1995 does not include such an express restriction; however, certain requirements in the act effectively prevent a company from carrying on such a business.

These restrictions have been criticized, with several government-appointed committees and boards recommending their removal. The impetus for reform increased when the attorneys general of each state and territory amended the legislation to remove the prohibition on the incorporation of legal firms; a similar amendment in relation to patent and trademark attorneys now seems inevitable.

Prior to releasing its consultation paper in October 2007, IP Australia consulted several peak representative organizations. Having considered a number of regimes applicable to various professions, a preferred model based on the model law for the incorporation of legal practices was identified. The consultation paper outlines this preferred incorporation model and considers a number of legislative options which would best allow companies to act as patent and trademark attorneys.

While the consultation paper focuses mainly on the proposed model for the incorporation of patent attorneys, it lists the following key amendments to the Trademarks Act as necessary to allow companies to describe themselves as trademark attorneys:

• The company must have a director who is a registered patent attorney (a 'trademarks director') and must notify the entity responsible for the registration of trademark attorneys (the 'designated manager');
  
  
• An incorporated trademark attorney must notify the designated manager if it ceases to describe itself as a trademark attorney;
  
  
• The consequences of an incorporated trademark attorney not having a trademarks director for more than seven days must be specified; and
  
  
• Officers and employees of a company that describes itself as a trademark attorney who are themselves registered trademark attorneys must still comply with their statutory obligations and will retain their privileges.

Written comments on the paper are sought by November 30 2007.

Marina Lloyd Jones, Allens Arthur Robinson, Sydney