IP/N/1/AUS/I/20  
 
18 June 2013  
(13-3159)  Page: 1/10  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
AUSTRALIA  
This document reproduces the text1 of the Intellectual Property (Standards of Practice) 
Instrument 2013 (No. 1), as notified by Australia on 22 May 2013 under Article 63.2 of the Agreement (see document IP/N/1/AUS/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
AUSTRALIE  
Le présent document contient le texte1 de l'Instrument de 2013 relatif à la propriété intellectuelle 
(normes de pratique) (n° 1), notifié par l'Australie le 22 mai 2013 au titre de l'article 63:2 de 
l'Accord (voir le document IP/N/1/AUS/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
A
USTRALIA  
En el presente documento se reproduce el texto1 del Instrumento de 2013 relativo a la propiedad 
intelectual (normas de práctica) (Nº 1), notificado por Australia el 22 de mayo de 2013 en virtud 
de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento IP/N/1/AUS/5). 
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/I/20 
 
- 2 - 
 
  PP 3-10 - Offset (Pdf file attached) 
PP 3 à 10 - Offset (fichier Pdf joint) PP 3-10 - Offset (fichero Pdf adjunto)  Intellectual Property (Standards of Practice) Instrument 2013 (No. 1) 
 
This instrument commences on 15 April 2013. 
 
For paragraph 228(2)(r)(ia) of the Patents Act 1990  and paragraph 231(2)(ha)(ia) of the 
Trade Marks Act 1995 , the Professional Standards Board establishes the Code of 
Conduct for Patent and Trade Marks Attorneys (published by the Board and 
commencing on 1 July 2008) as a standard of practice. 
 
PROFESSIONAL STANDARDS BOARD FOR PATENT AND TRADE MARKS 
ATTORNEYS 
 
22 March 2013 
 
 
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CODE OF CONDUCT 
 
FOR  
 
PATENT AND TRADE MARKS 
ATTORNEYS 
 
 
 
 
 
 
 
1 July 2008 
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CODE OF CONDUCT 
FOR 
PATENT AND TRADE MARKS ATTORNEYS 
1 JULY 2008 
 
 
 
1. BACKGROUND 
 
1.1. The Code of Conduct published by the Professional Standards Board for Patent 
and Trade Marks Attorneys (the Board) applies to all registered patent and trade 
marks attorneys (attorneys) including those employed in companies undertaking 
the business of the company. 
 
1.2. The former Code of Conduct was developed by the Board on the basis of wide-
spread stakeholder consultation and with the cooperation of the profession and 
the Australian Competition and Consumer Commission (ACCC). It was 
established at the instigation of the Government in its response to the Review of 
the Regulatory Regime for Patent Attorneys undertaken in 1996. 
 
1.3.
 The Board has revised the former Code of Conduct to reflect changes to the 
discipline regime for registered attorneys brought about by amendments to the 
Patents Regulations 1991  and the Trade Marks Regulations 19 95. 
 
1.4. In this Code a reference to the professions is a reference to the patent and trade 
marks attorney professions. 
 
1.5. This Code commences on 1 July 2008.   
 
2. OBJECTIVES OF THE CODE 
 
2.1 To provide a framework for fair and equitable dealing between attorneys and 
their clients; attorneys and their fellow practitioners; and attorneys and IP 
Australia – the office of Patents, Trade Marks, Designs and Plant Breeders 
Rights. 
 
2.2 To provide a standard of acceptable conduct that can be used in the settling of    
disputes.  
 
2.3 To assist clients of attorneys and others dealing with the professions to 
understand the obligations of attorneys to their clients, IP Australia and each 
other.  The Code also provides how information can be provided to the Board to 
enable the Board to investigate the conduct of the attorney.  
 
 
 
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3. THE CODE OF CONDUCT 
 
3.1 Preamble 
 
i. The Code contains specific comment about some behaviour by way of 
illustration to assist attorneys and their clients to understand the breadth of the 
Code and the types of conduct covered. The specific instances are not 
exhaustive and in no way limit the impact of the principles of the Code on the 
individual attorney's method of practice. 
 
ii. This Code does not diminish an attorney’s responsibility to act according to 
law. In addition, it does not in any way diminish a c lient’s rights.  
 
3.2 Code 
 
3.2.1 Only registered patent attorneys, as defined under the  Patents Act 1990,  may 
undertake all aspects of practice as patent attorneys and may describe 
themselves as  patent attorneys. Only registered trade marks attorneys, as defined 
under the  Trade Marks Act 1995,  may describe themselves as trade marks 
attorneys or as trade mark agents. 
 
i. The Patents Act 1990  allows legal practitioners , who are not patent attorneys,  
to carry on the business, act or practice as a patent attorney but they must not 
describe themselves as patent attorneys. They are not allowed to prepare 
specifications, except under specified conditions, such as acting under the 
instructions of a registered patent attorney, or acting at the direction of a court. 
The Act also allows the client of a registered patent attorney the right to claim 
privilege in relation to communications with the patent attorney in appropriate 
circumstances.  
 
ii. The Trade Marks Act 1995  allows any person to practise before IP Australia 
in trade mark matters, but only registered trade marks attorneys have the right 
to describe themselves as trade marks attorneys or trade marks agents. The 
Act also allows the client of a registered trade marks attorney the right to 
claim privilege in relation to communications with the trade marks attorney in 
appropriate circumstances. 
 
iii. An attorney must not undertake work for which he/she is not qualified, for 
example, an attorney must not purport to be able to represent a client before a 
court if they are not entitled to do so.  
 
3.2.2  An attorney supervising unqualified staff is responsible for the work of the 
unqualified staff. 
 
i. If a client is dealing with a staff member who is not an attorney, the client 
must be informed that the staff member is not registered. The staff member 
must work under the active supervision of an attorney. 
 
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3.2.3 In the interests of clients, the qualifications of an attorney to practise will be 
clearly indicated, and appropriate expertise, including technical expertise, wi ll 
be brought to bear on work entrusted by clients. 
 
3.2.4 Where an attorney engages another practitioner, either in Australia or in another 
country to act on behalf of a client, the attorney must make inquiries to satisfy 
himself or herself that the other practitioner is appropriately qualified to carry 
out the work required. 
 
3.2.5 An attorney must at all times maintain standards of professional practice which 
are at once courteous, ethical and well-informed. 
 
i. An attorney must act according to, and uphold the norms of the professions. 
 
ii. An a
ttorney must not act in a way that is fraudulent or deceitful and must at all 
times ensure that his/her conduct is appropriate to the professions. 
 
iii. The success of the professions relies heavily on trust, honesty, and a high 
standard of behaviour as described in the following paragraphs. 
 
iv. An attorney must make available to a client, information regarding the 
implications of having the attorney act on the behalf of the client in a matter, 
in terms of procedures, cost and timing. This will ensure that the client is 
made aware of the likely costs of the actions that are necessary or 
recommended by the attorney. 
 
v. At the request of a client, an attorney must provide a detailed estimate of the 
cost of acting for the client in a particular matter. 
 
vi. Where an attorney withdraws his or her services or ceases to act for a client, 
the attorney must inform the client of any actions necessary to maintain the 
intellectual property rights of that client. 
 
3.2.6 An attorney must handle the funds of a client in accordance with proper 
accounting practices. An attorney must not use monies paid by a client other 
than for the purposes for which the monies are paid. 
 
3.2.7 An attorney must at all times act within the law and be subject to that obligation 
in the best interests of the client.  
 
i. An attorney must act promptly on a client’s instructions or promptly inform a 
client of his or her inability to do so . 
 
ii. An attorney must not use his/her position to take advantage of either on 
his/her own account or on behalf of another person - 
 information given to the attorney by a client, or  
 circumstances resulting from the professional relationship with a 
client.  
 
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iii. A client should be given an opportunity to view drafts of specifications where 
time allows. 
 
iv. Subject to the client satisfying any lien imposed in accordance with the 
relevant legislation, all documents, samples and other material that is the 
property of the client must be made available or forwarded to the client on 
request. 
 
3.2.8 An attorney must take all reasonable steps to avoid situations in which a conflict 
between the interests of a client and the interests of the attorney or those of 
another client may occur. 
 
i. Where a conflict or a potential conflict arises, an attorney must take 
immediate steps to resolve the conflict. Where the rights of a person might be 
put at risk by failing to act urgently in a conflict or potential conflict, the 
attorney must take the necessary action to maintain the rights of a person and 
then immediately resolve the conflict. 
 
3.2.9 An attorney must not engage in behaviours or practices which are misleading or 
deceptive, or that are likely to mislead or deceive.   This includes dealings with 
IP Australia and in, particular, dealings with the Commissioner of Patents, 
Registrar of Trade Marks, Registrar of Designs and Registrar of Plant Breeders 
Rights. 
 
i. To mislead someone may include: 
 lying to them; 
 leading them to a wrong conclusion;  
 creating a false impression; 
 leaving out (or hiding) important information; and 
 making false or inaccurate claims. 
 
ii. Adve
rtising is permitted but it should be honest and accurate and it should 
avoid the pitfalls described above. If it is of a comparative nature it must be 
factually supportable and any comparisons must not be misleading. 
 
4. WHAT IS EXPECTED OF CLIENTS 
 
4.1 The following is intended to assist a client in understanding what makes for a 
successful relationship with an attorney. 
 
4.2 Clients should: 
 assist the attorney to provide appropriate advice or take appropriate 
action by disclosing all relevant information they hold in respect of 
the rights sought; 
 provide attorneys with clear and timely instructions based on the 
advice given; 
 provide timely responses to requests from the attorney; 
 settle accounts provided by attorneys promptly, including charges 
for overseas actions commissioned by the attorney in accordance 
with client instructions; 
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 provide advance payments when requested; and 
 observe the same standards of honesty and courtesy in the 
relationship as are required of the attorneys themselves. 
 
5. COMPLAINTS AGAINST AN ATTORNEY 
 
5.1 Grounds for complaint 
 
i. A complaint or information on the behaviour of an attorney may be provided 
to the Board  on the grounds that an attorney: 
 has breached this Code; 
 has engaged in professional misconduct or unsatisfactory 
professional conduct; 
 was unqualified at the time of registration; or 
 has obtained registration by fraud. 
 
5.2 Definitions  
 
i.   Professional misconduct means:  
 unsatisfactory professional conduct that involves a substantial or 
consistent failure to reach reasonable standards of competence and 
diligence; or 
 any other conduct, whether occurring in connection with practice 
as an attorney or otherwise, that shows that the attorney is not of 
good fame, integrity and character; or 
 any contravention of a law that is declared by the Patents 
Regulations 1991  or the Trade Marks Regulations 1995  to be 
professional misconduct. 
 
ii   Unsatisfactory professional conduct includes conduct, in connection with 
practice as a registered patent or trade marks attorney that falls short of the 
standa
rd of competence, diligence and behaviour that a member of the public is 
entitled to expect of an attorney. 
 
5.3 Complaints and Discipline 
 
i. The Board has the sole responsibility for commencing and conducting 
disciplinary proceedings against a registered attorney. 
ii. Any person or body may complain or provide information to the Board 
concerning the conduct of a registered attorney.  
iii. The Board’s role in the commencing of disciplinary proceedings includes 
investigating either as a result of information received or of its own motion 
whether an attorney has engaged in professional misconduct or unsatisfactory 
professional conduct.  
iv. Clients must discuss a grievance with an attorney to attempt settlement before 
referring the conduct of the attorney to the Board.  
 
5.4
 Complaints Can Be Made To: 
 
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i. A complaint about the conduct of an attorney under this Code of Conduct 
must be made to: 
The Secretary 
Professional Standards Board for Patent and Trade Marks 
Attorneys 
PO Box 200  
WODEN ACT 2606 
Phone: (02) 6283 2345. 
 
6. ADMINISTRATION OF THIS CODE 
 
6.1 Administration body 
 
i. The Code is a publicly available document and it is administered by the 
Professional Standards Board for Patent and Trade Marks Attorneys 
established under th e Patents Act 1990  and the Patents Regulations 1991 . 
 
ii. The Board will supervise: 
 the publicising of the Code, ensuring widespread awareness of its 
provisions; 
 the availability of the Code to clients and potential clients;  
 the implementation of measures for ensuring attorney awareness of 
the Code;
 
 the conduct of periodic reviews of the effectiveness of the Code 
and its procedures with a view to possible change; and 
 the preparation of annual and other reports in relation to the Code. 
 
iii. Copies of this Code of Conduct are available on the PSB Website and can be 
obtained from: 
Professional Standards Board Secretariat 
PO Box 200 
WODEN ACT 2606 
Phone: (02) 6283 2345.   
Email: mail.psb@ipaustralia.gov.au  
Website: ww w.psb.gov.au 
 
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