Incorporation of Patent and Trade Marks Attorneys

Incorporation of Patent and Trade Marks Attorneys

Options - Attorneys Inc. No notification or registration Notification of company Registration of company

Option 1: no notification or registration Pros • Few legislative changes • No extra obligations on Designated Manager • Very few additional obligations on company Cons • No transparency on companies acting as attorneys • If the company does not have an attorney director (for any period), company cannot act or describe itself as an attorney • Misconduct action only against individuals, not against company

Option 2: notification of company Pros • List of companies acting as attorneys • Mechanism to deal with absence of attorney director Cons • Greater administrative burden on companies • Additional obligations on Designated Manager

Option 3: registration of company Pros • Certainty as to companies acting as attorneys • Similar to other statutory licensing schemes • More direct control over companies (eg companies registration as an attorney can be cancelled) • Behaviour of whole company considered Cons • Greatest administrative burden on companies • Maximum obligations on Designated Manager

Preferred option Notification of company based on the Model Bill for the Legal Profession

Notification of company • Incorporated patent attorney • Patent attorney director • Company must notify Designated Manager • That it acts as an attorney • That it ceases to act as an attorney • Consequences of not having a patent attorney director

Obligations - attorney director • Responsible for management of patent attorney services provided by the company • Same obligations under company law as any other director

Obligations – individual attorneys • Must comply with statutory obligations • Retain privileges • Code of conduct applies • Retain personal responsibility for discipline and complaints

Professional Indemnity Insurance • Will apply to all patent and trade marks attorneys • With some exceptions • In-house attorneys • Non-practising attorneys

Next Steps - Legislation Policy Approval Legislative Change

Legislative Bid Drafting Instructions Policy Approval Prime Minister or Cabinet Exposure Draft Bill Approval to introduce legislation Introduction and passage of Bill through Parliament Support material

Are we there yet?

Thank you Brendan Bourke phone: 02 6283 2148 email: Brendan. Bourke@ipaustralia. gov. au