Professional Conduct, Ethics and Client Duties
Fiduciary and regulatory duties
A patent and trade marks attorney owes duties to the client, the court or Commissioner, and the profession. Candidates must know the priority rules when duties conflict: the attorney must not mislead the Commissioner, and must not act where a conflict of interest exists without informed consent.
Confidentiality and conflicts
Client confidences are protected, but the attorney must not assist a client to mislead. Traps: acting for two competitors in the same field; continuing to act after discovering a conflict; and disclosing client information without authority.
Competence and candour
An attorney must act competently, keep the client informed, and give candid advice on prospects. Candidates should know that an attorney must not file a specification known to be invalid or unsupported, and must correct errors promptly.
Fees and engagement
Fee arrangements must be disclosed and fair; contingent fees are constrained. Traps: charging for work not done; failing to disclose a conflict; and accepting instructions outside the attorney's competence without referral.
Worked example
An attorney learns that a client's invention was published by the client a year before filing. The attorney must advise candidly on the novelty risk and the available grace period, not conceal the issue. Rule of thumb: candour to the client and to the Commissioner outweighs the desire to preserve the application.
Other IP and Related Law
Copyright
Copyright protects original expression fixed in a material form. It subsists automatically, with no registration. Traps: confusing ideas with expression; assuming copyright protects a functional product; and forgetting the idea/expression dichotomy in software cases.
Confidential information
Breach of confidence requires information that is confidential, imparted in circumstances importing an obligation, and used without authority. Traps: treating publicly available information as confidential; and overlooking that an employee's general skill and knowledge is not protected.
Plant breeder's rights
PBR protects new plant varieties that are distinct, uniform and stable. Candidates must distinguish PBR from patents: PBR protects the variety itself, while a patent may protect a technical process. Traps: assuming a patented gene prevents PBR exploitation; and forgetting the farmer's saving exemption.
Competition law interface
IP rights do not authorise anti-competitive conduct. Traps: assuming a patent licence exempts the licensor from competition law; and overlooking that refusal to licence may, in limited circumstances, raise competition issues.
Worked example
A former employee uses customer lists and pricing formulas at a new employer. General skill is unprotected, but the confidential list and formulas may be restrained. Rule of thumb: separate general skill from specific confidential information.