The definition of Patent
A privilege is an “exemption from the normal obligation of a citizen to provide the judicial arm of the state with the information and documents which are required for determination of litigation”.1
The current Australian Patents Act provides privilege to communication between Australian registered patent attorneys and their clients. The provision reads:
(2) A communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such communication, are privileged to the same extent as a communication between a solicitor and his or her client.2
Problems in the abovementioned provision came to light in 2004 by the decision in Eli Lilly v Pfizer Ireland Pharmaceuticals3. Particularly when it was held that the provision does not privilege the communication between clients and foreign patent attorneys. In other words, the patent attorney privilege is “confined to communications with patent attorneys registered as such in Australia” and did not extend to communications with any patent attorney/agent anywhere in the world.4 Communication between clients and foreign patent attorneys may, therefore, be ordered to be produced by an Australian court. Such court order could be detrimental to the client’s case.5
Source: Watermark Blog
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