EXPLANATORY STATEMENT
STATUTORY RULES 1987 NO. 12
Issued by the Authority of the Minister for Science.
These amendments of the Patent Attorneys Regulations provide for:
• wider grounds for complaints against patent attorneys to include unsatisfactory conduct and unprofessional conduct;
• different penalties for various degrees of unsatisfactory or unprofessional conduct which will allow for reprimand, suspension or cancellation of registration;
• the replacement of the existing Board of Examiners of Patent Attorneys by the Patent Attorneys Professional Standards Board which will become a receiving body for complaints and the authorising authority for instituting disciplinary proceedings;
• the establishment of the Patent Attorneys Disciplinary Tribunal which will assume the disciplinary role presently held by the Commissioner of Patents and will hear, and decide on, any disciplinary proceedings; and
• review by the Administrative Appeals Tribunal of a decision of the Standards Board not to authorise the institution of disciplinary proceedings, or a decision of the Tribunal.
Minor amendments of the prescribed documentation for a person making an application for registration as a patent attorney are also made by the regulations.
These changes to the disciplinary provisions overcame previous inadequacies of the Regulations in that they provided for only a single penalty (de-registration) on grounds that did not include degrees of unprofessional conduct.
The main interest groups, namely the Institute of Patent Attorneys of Australia, the Australian Manufacturers’ Patents, Industrial Designs, Copyright and Trade Mark Association, and the Law Council of Australia were consulted in developing the regulations.
Details of the amendments are attached.
DETAILS OF THE AMENDMENTS
Regulations 1 and 2 cite the Principal Regulations and include definitions of certain terms.
Regulation 3 amends existing regulation 5 to establish the Patent Attorneys Professional Standards Board (the “Board”) (to replace the Board of Examiners of Patent Attorneys) and to provide that appointed members shall hold office for a period of 3 years, be eligible for reappointment and be subject to removal from office by the Minister for misbehaviour or incapacity.
Regulation 4 amends the requirement in existing regulation 23 that an applicant for registration as a patent attorney furnish evidence that he is a British subject, to require him to furnish evidence that he is an Australian citizen. It also amends the requirement that an applicant furnish certificates of his character from persons to whom he has been known and acquainted for 12 months, to require the certificates to be from persons to whom he has been known for 12 months.
Regulation 5 repeals existing regulations 25 to 30 (inclusive) and substitutes the following regulations which make new and revised disciplinary provisions.
Regulation 25 establishes the Patent Attorneys Disciplinary Tribunal (“the Tribunal”).
Regulation 26 provides for the Minister to appoint a person to constitute the Tribunal and that such appointment shall be for the period specified in the instrument of appointment, which shall be published in the Official Journal.
Regulation 27 provides that -
• the Minister may appoint a person to act for no more than 12 months in the office of the person constituting the Tribunal during a vacancy in that office or during any or all periods when the holder of that Office is absent from duty or from Australia, or is unable to perform the functions of the Tribunal; and
• such an appointment may be expressed to have effect only in such circumstances as are specified in the instrument of appointment, which shall be published in the Official Journal.
Regulation 28 provides that a person is not qualified to be appointed to constitute the Tribunal or act in the office of the person constituting the Tribunal unless he or she is enrolled, and has for a period of not less than 7 years been enrolled, as a barrister, a solicitor, a barrister and solicitor or a legal practitioner of the High Court or of the Supreme Court of a State or Territory.
Regulation 29 provides that -
• where a person constituting the Tribunal or acting in the office of the person constituting the Tribunal has or acquires any interest, pecuniary or otherwise, that could conflict with the proper performance of his or her functions in relation to proceedings before the Tribunal:
- the person shall disclose the nature of the interest to the parties to the proceedings; and
- except with the consent of the parties, the person shall not perform those functions;
• the Minister may, by instrument signed by him or her, appoint another person to be the person constituting the Tribunal for the purposes of those proceedings; and,
• a copy of the instrument of appointment shall be published in the Official Journal.
Regulation 30 provides that the Minister may terminate the appointment of a person constituting the Tribunal or acting in the office of the person constituting the Tribunal for inefficiency, misbehaviour or physical or mental incapacity, and shall remove from office the person constituting the Tribunal or acting in the office of the person constituting the Tribunal for failing, without reasonable excuse, to disclose the nature of an interest required to be disclosed under regulation 29.
Regulation 30A provides that a person constituting the Tribunal or acting in the office of the person constituting the Tribunal may resign his or her office in writing to the Minister.
Regulation 30B provides that -
• complaints against a patent attorney in respect of his or her professional conduct may be made to the Board by the Institute of Patent Attorneys of Australia (the “Institute”) or by a person whose interests are affected by the professional conduct of that patent attorney;
• written complaints with respect to the continuing registration of a patent attorney may be made to the Board by the Institute or any other person on the ground(s) that the patent attorney obtained his or her registration by fraud and/or did not possess the required qualification at the time of registration;
• such a complaint shall state the nature of the complaint, shall set out the name and address of the complainant and the name and address (if known) of the patent attorney, shall be signed by the complainant and shall be accompanied by a statutory declaration setting out the facts on which the complainant relies to support the complaint;
• the Board shall furnish the patent attorney against whom a complaint has been made with a copy of the complaint and accompanying statutory declaration, and may request the patent attorney to furnish, within a specified period of not less than 21 days, a statement in writing replying to the complaint;
• additional information may be requested by the Board from the Commissioner, the complainant or the patent attorney; and
• the Board shall consider a complaint together with any such reply or additional information.
Regulation 30C provides that -
• where it appears to the Board after consideration of a complaint that the patent attorney may be guilty of unsatisfactory conduct or unprofessional conduct, the Board shall authorize the complainant to institute proceedings before the Tribunal;
• where it appears to the Board after consideration of the complaint that there are grounds for believing that a person should no longer be registered as a patent attorney, the Board shall authorize the complainant to institute proceedings before the Tribunal in respect of the continuing registration of the person as a patent attorney;
• where the Board authorizes a complainant to institute proceedings against a patent attorney, it shall inform the complainant of his or her entitlement to request the Board to institute those proceedings on the complainant’s behalf;
• a person is not entitled to institute proceedings against a patent attorney before the Tribunal unless he or she is authorised to do so under regulation 30C;
• the Board shall institute proceedings before the Tribunal if so requested by the complainant or may, itself, institute proceedings if the complainant fails to institute proceedings within 21 days of the authorization;
• the Board may continue proceedings in place of the complainant where the complainant fails to continue the proceedings;
• where the Board authorizes the institution of proceedings, it shall forward to the Tribunal copies of the complaint and all other documents in its possession relevant to the complaint and shall inform the patent attorney of the authorization;
• where the Board decides not to authorize the institution of proceedings, written notice shall be given to the complainant and the patent attorney;
• “unsatisfactory conduct” means not having attained or sustained a professional standard that is consistent with the standard of practice of patent attorneys; and
• “unprofessional conduct” means conduct on the part of a patent attorney whereby he or she can be regarded as committing a gross failure to comply with the standards which, in the circumstances, it is reasonable to require the patent attorney to observe.
Regulation 30D provides for the institution of proceedings before the Tribunal, that the Tribunal shall fix a time and place for a hearing, and that the time of the hearing shall not be less than 21 days after the patent attorney was informed by the Tribunal of the time and place so fixed.
Regulation 30E provides that -
• the Tribunal shall determine its own procedure;
• proceedings shall be conducted with as little formality and technicality and with as much expedition as the requirements of the Regulations, and a proper consideration of the natter, permits;
• the Tribunal is not bound by any rules of evidence but may inform itself on any natter in such manner as it thinks fit; and
• the Tribunal may take evidence on oath or affirmation and, for that purpose, the Tribunal may administer an oath or affirmation.
Regulation 30F provides that, for the purposes of a hearing before the Tribunal, the Tribunal may, by service of a summons on the person -
• summon any person, other than the patent attorney, to appear at the hearing to give evidence of the charge and to produce such documents, if any, as are referred to in the summons;
• summon the patent attorney against whom the proceedings were instituted to appear in person at the hearing to produce such documents, if any, as are referred to in the summons and to give evidence for the purpose only of identifying those documents.
Regulation 30G provides that -
• a party to proceedings may appear in person or be represented by a legal practitioner or, with the leave of the Tribunal, by another person; and
• such a party or representative may request the Tribunal to summon witnesses to attend a hearing of the proceedings and may examine witnesses appearing at the hearing and address the Tribunal.
Regulation 30H provides that -
• a person summoned to appear before the Tribunal shall not, without reasonable excuse, and after tender of reasonable expenses, fail to appear or fail to produce documents or articles as required by the summons, or fail to appear and report to the Tribunal from day to day unless excused by the Tribunal;
• a person appearing as a witness at a hearing before the Tribunal shall not, without reasonable excuse, refuse or fail to be sworn or to make an affirmation or to answer a question that he or she is required by the Tribunal to answer; and
• a patent attorney against whom proceedings have been instituted who is summoned to appear at a hearing before the Tribunal in respect of those proceedings shall not, without reasonable excuse, refuse or fail to be sworn or to make an affirmation or to answer a question relevant to the evidence that he or she was summoned to give;
• it is a reasonable excuse for the patent attorney or for a person appearing as a witness to refuse or fail to answer a question or to produce a document or an article, if the answer to the question, or the document, may tend to prove that he or she has committed an offence against a law of the commonwealth or of a State or Territory;
• breaches of regulation 30H shall be subject to a penalty of $1,000 or imprisonment for 6 months, or both.
Regulation 30J provides that -
• a person constituting the Tribunal or acting in the office of the person constituting the Tribunal or appointed under regulation 29 has, in exercising his or her powers and functions under Part IV of the Regulations, the same protection and immunity as a Justice of the High Court;
• a member of the Board has, in considering complaints under Part IV of the Regulations, the same protection and immunity as a Justice of the High Court;
• a legal practitioner or other person appearing before the Tribunal has the same protection and immunity as a barrister has in appearing for a party in proceedings in the High Court; and
• subject to Part IV of the Regulations, a person summoned to attend or appearing before the Tribunal as a witness has the same protection, and is, in addition to the penalties provided in this Part, subject to the same liabilities, as a witness in proceedings in the High Court.
Regulation 30K provides that -
• a hearing before the Tribunal shall be in public, except that, where the Tribunal is satisfied that it is desirable to do so in the public interest or by reason of the confidential nature of any evidence or matter, it may direct that a hearing, or a part of a hearing, shall take place in private and give directions as to the persons who may be present, and may give directions restricting or prohibiting publication or disclosure of evidence or any matter contained in documents lodged with the Tribunal or any finding or decision of the Tribunal in relation to the proceedings;
• a person who contravenes or fails to comply with a direction under regulation 30K that is applicable to him or her is guilty of an offence punishable, on conviction, by a fine not exceeding $500.
Regulation 30L provides that -
• where the Tribunal, after hearing a charge, finds that a patent attorney has been guilty of unsatisfactory conduct, it may reprimand the patent attorney or determine that the registration of the patent attorney be suspended for a period not exceeding 12 months;
• where the Tribunal, after hearing a charge, finds that a patent attorney has been guilty of unprofessional conduct, it may reprimand the patent attorney, determine that the registration of the patent attorney be suspended for a period not exceeding 12 months or determine that the registration of the patent attorney be cancelled;
• in exercising its disciplinary powers in relation to a patent attorney’s unsatisfactory or unprofessional conduct, the Tribunal may take into account its findings in relation to the conduct of the patent attorney in any other proceedings instituted before the Tribunal in respect of that patent attorney;
• where the Tribunal, after a hearing, finds that the patent attorney obtained registration by fraud, it shall determine that the registration of the patent attorney be cancelled;
• where the Tribunal finds that the patent attorney did not, at the time of his or her registration, possess a qualification that, at that time, he or she was required by law to possess, it may, in a case where the patent attorney has subsequently obtained the qualification or is no longer required to possess it, reprimand the patent attorney, or in any other case, determine that the registration of the patent attorney be cancelled; and
• the Tribunal shall, on completion of proceedings before it, cause written notice to be given to the parties to the proceedings and the Commissioner of its findings and, where applicable, of a reprimand or determination.
Regulation 30M provides that, where the Tribunal determines that the registration of the patent attorney be suspended or cancelled, the registration is so suspended or cancelled and the Commissioner shall accordingly annotate, or remove the name of the Patent Attorney from, the Register.
Regulation 30N provides that -
• the Tribunal may direct the Commissioner to publish in the Official Journal a copy of, or an extract from, the notice of the findings and, where applicable, the reprimand or determination, as the case may be; and
• where the Commissioner is so directed, he shall publish the copy or extract as soon as practicable.
Regulation 30P provides that -
• where the Tribunal determines that the registration of a patent attorney be suspended or cancelled it may appoint another patent attorney, with the consent of that other patent attorney, to complete any outstanding business which the former patent attorney had commenced but had not completed;
• such an appointment may be expressed to have effect for the duration of the period of suspension, or, where registration has been cancelled, until completion or disposal of the outstanding business; and
• nothing in the regulation authorizes a patent attorney to act as a patent attorney on behalf of a person without the consent of that person.
Regulation 30Q provides that -
• a patent attorney appointed under regulation 30P to complete any outstanding business of a former patent attorney may require the former patent attorney to make available to him or her any information, books, accounts and other documents concerning that business, and any moneys held by the former patent attorney on behalf of a client or moneys that have been paid in respect of services that have not been rendered to or on behalf of that client; and
• failure by a former patent attorney, without reasonable excuse, to comply with such requirements is punishable, on conviction, by a fine not exceeding $500.
Regulation 30R makes provisions for the service of a notice, summons or other document to a person personally or by post.
Regulation 30S makes provisions for -
• review by the Administrative Appeals Tribunal of a decision of the Board not to authorize the institution of proceedings, or a decision of the Tribunal; and
• a person whose interests are adversely affected by such a decision to be given a notice setting out the decision, the findings on material questions of fact, referring to the evidence or other material on which those findings were based, giving the reasons for the decision and including a statement about the entitlement of the person to apply to the Administrative Appeals Tribunal for a review of the decision.
Regulation 6 inserts a new heading “PART IVA - PAYMENT OF REGISTRATION FEE” before existing regulation 31.
Regulation 7 makes a drafting amendment to the First Schedule and substitutes a revised Form 6 - Application for Registration as a Patent Attorney - consequential on the changes made by regulation 4.
Regulation 8 makes provision for certain consequential and other drafting amendments.
Regulation 9 is a transitional provision which ensures that -
• the elected and appointed members of the Board of Examiners of Patent Attorneys immediately prior to the commencement of the amending regulations, shall be, on the date of commencement of the amending regulations, members of the Patent Attorneys Professional Standards Board as if he or she had been elected or appointed under the amended regulations, elected members continuing to hold office for the unexpired portion of their elected term and appointed members for the unexpired portion of the period of 3 years commencing on the date of his or her appointment; and
• any determination made, or any instruction, notification, recognition or approval given by the existing Board which is in force immediately before the date of commencement of the amending regulations, and any certificate issued by that Board, has effect as if made, given or issued by the reconstituted Board.