Case: Biochem Pharma Inc v Commissioner of Patents (1998) 82 FCR 87
Outcome: cited
A number of principles emerge from consideration of these provisions of the 1990 Patents Act . First, the Act recognises the existence and separate roles of registered patent attorneys and legal practitioners: ss 200, 201 and 202. Secondly, both registered patent attorneys and legal practitioners may apply for or obtain patents, prepare documents for the purposes of the 1990 Patents Act and give advice (other than advice of a scientific or technical nature) about the validity or infringement of patents: ss 201 and 202 and see also Biochem Pharma Inc v Commissioner of Patents (1998) 82 FCR 87 , 92 (per Hill J). However, only a registered patent attorney (or a legal practitioner under the instruction of a registered patent attorney) may draft patent specifications or a document relating to an amendment of a specification: s 202. Finally, ss 201(8) to (11) exempt from the area of work restricted to registered patent attorneys, work done for an employer (or a company which is a member of the same group as the person's employer). Accordingly, individuals and companies may prosecute their own patent applications and draft their own patent specifications. The last principle reinforces that reg 20.3(3)(a)(ii) of the Act, properly construed, permits experience gained whilst employed by a company engaged in their own patent applications and specifications as relevant experience for the purposes of registration as a patent attorney. 30 None of those provisions support the contention that reg 20.3(3)(a)(i) and / or (ii) should be construed to include a person in the position of the Applicant as having the necessary work experience to qualify as a registered patent attorney. As noted earlier, the 1990 Patents Act clearly marks out the drafting of patent specifications as the exclusive domain of registered patent attorneys. Read in that context, that the three categories of work experience in reg 20.3(3)(a) should be directed toward the acquisition of experience in the construction and drafting of specifications is neither anomalous nor unreasonable. 31 Since 1981, the patents legislation and regulations have been the subject of a number of reviews, recommendations and changes. The Respondent submitted, and I accept, that since the 1980s a number of themes have emerged from the patents legislation and the regulations as they have existed from time to time: first, a concern with protecting the public from unqualified and inexperienced persons undertaking work in relation to patents; secondly, the introduction in the 1980s and the 1990s of increasing degrees of competition; and, thirdly, an attempt to balance those two themes: see Biochem 82 FCR 87 at 88. The balance has been achieved in three ways: (1) acknowledgement that prior to registration as a patent attorney, relevant experience may be gained in the public or private sector; (2) acknowledgement that the business of registered patent attorneys and legal practitioners overlaps but that registered patent attorneys (or legal practitioners under the instruction of a registered patent attorney) retain the exclusive right to draft patent specifications; and (3) adoption of a narrow exemption that permits persons to continue to prosecute their own patent applications or those of their employers. 32 In the early 1980s, the "employment as prescribed" requirement prior to registration was limited to employment for a period by a patent attorney. The period was six months for persons who had previously been employed in the Patents Office as an examiner for a prescribed period and, in other cases, for not less than one year: ss 133(3)(e), 134, 136(1) and (5) and 137 of the 1952 Patents Act and reg 21 of the Patent Attorneys Regulations 1954 (Cth). 33 In a report to the Minister for Science and Technology dated 29 August 1984 from the Industrial Property Advisory Committee entitled "Patents, Innovation and Competition", the Committee recommended, inter alia , that the qualifying period in employment be made a uniform period of 12 months in the public and the private sector: recommendation 39(iii). The Committee explained the role of Patent Attorneys in the following terms (see para 17.1 and 17.5): Patent attorneys are a body of professionals specialising in patent law and practice, and particularly in the searching, preparation, and prosecution of patent applications in Australia and abroad. While patent applicants may prosecute their own applications before the Office, patent attorneys have the exclusive right under the Patents Act to prepare specifications for a fee, so they have an effective professional monopoly to handle patent applications. They advise clients in relation to patent validity and infringement and also deal with trade marks, industrial designs, and licensing. The care and skill with which patent applications are prepared materially influence the scope and value of the protection obtained under a patent. The drafting of patent specifications and claims requires special skill and knowledge of the applicable law and practice, as well as a capacity to understand the technology involved. No amount of legal skill will avail if the subject matter is not understood. If Australian inventors are to obtain adequate protection for their inventions here and abroad, the assistance of people possessing these attributes must be available in Australia. ... We have already commented on the important service role which patent attorneys play in preparing and filing patent applications in Australia and abroad. We believe that it is appropriate for the drafting and filing of patent specifications for reward to be the exclusive domain of a trained and regulated professional body. The work is highly technical and it is an integral part of the whole process of effective innovation. ... The Committee therefore accepts that a limited monopoly of practice by patent attorneys should be retained. (Emphasis added.)