You Say Attorney, I Say Solicitor … What’s All the Fuss?
In Australia, and other many countries of the Commonwealth such as the United Kingdom, patent attorneys do not require a law degree or to be admitted as a solicitor. In contrast, the US model of practice requires patent attorneys also to be qualified as solicitors.
“We know we need each other” 1
Confusion flourishes through the use of the different terms used to describe practitioners involved in patent work. For example:
- patent attorney: Only registered patent attorneys can legally draft patents on behalf of inventors. Patent attorneys may also advise on validity or infringement of patents, patent filing strategies, or patent licensing issues; and
- solicitor (also referred to as an attorney, lawyer or legal practitioner): solicitors can draft legal documents such as licenses and advise on all aspects of intellectual property protection, infringement and enforcement.
So, what is the difference?
Australia and many Commonwealth countries: Registered patent attorneys are not permitted to prepare documents to be issued from or filed in court, or to transact business or conduct proceedings in court.2 These aspects of practice are reserved for legal practitioners registered to practice in the relevant jurisdiction.
USA: Registered patent attorneys must first be qualified as legal practitioners before undergoing examinations to join the US Patent Bar. The US system offers distinct advantages in the sense of the breadth and depth of service that attorneys can provide to patent clients.
“Attorney” to most conveys legal practice. However, in Australia the vast majority of Patent Attorneys are NOT legal practitioners.
“It looks as if we two will never be one,
Something must be done.” 1
Splitting intellectual property practice among professions by having boundaries prescribed by Statute and Common Law – Does this help the consumer or the professions?
This, in my mind, this does not provide clarity for consumers or the professions, since:
- not all consumers know what they want or need, and indeed needs change;
- consumers are not experts in the law and so cannot be expected to know where the boundaries lie; and
- drawing artificial boundaries between the professions does not address the underlying problem that the work required may cross professional boundaries. Therefore, the way the professions are trained and qualified needs to be looked at. This does not necessarily mean that practitioners should extend their areas of practice but rather their base of training and qualification – as in the US model.
“Goodness knows what the end will be”1 … Privilege
Another advantage of extending the training and qualification of patent professionals is highlighted by the issue of professional privilege.
Solicitors enjoy professional privilege under the common law and in this sense it is cross-jurisdictional. By contrast, privilege of communications with patent attorneys arises under statute and hence is limited to the jurisdiction of the statute.
This distinction may be very significant. Privilege affords the right to refuse access to sensitive material to other parties on the grounds that it is privileged.4 The scope of professional privilege across jurisdictions is an issue that highlights the advantages of having dually qualified professionals.
“Things have come to a pretty pass” 1
The emergence of the multidisciplinary legal practice (MDP) has seen various professions joining forces with legal practices to enable more synergistic service offerings.
According to Stephen Mayson (2010),5 there is a real need for MDPs since most people ‘don’t have a lot of time; don’t have a lot of knowledge; but do have a problem that spans a number of professional requirements’ and they want the problem resolved rather being shuffled through the different professions.
The demand for boutique yet full service offering, such as in Intellectual Property, needs to be provided without requiring the client to:
- retain separate professional advisors; and
- risk advice which may be inconsistent resulting in confusion rather than clarity when coming from separate professional practices.
Cost and other resource efficiencies arise from having consistent professional representation.
It is the client who has the expectation of what professional services are required to meet their needs, not the boundaries imposed by the profession. Therefore, looking at the problem from the client’s prospective, the multidisciplinary legal practice (MDP) is a relatively new structure that recognises the shift in market demand for synergistic advice across professional boundaries. The MDP structure should be better utilised in handling intellectual property matters. More about this below.
“But oh! If we call the whole thing off” 1
The professions risk losing parts of their monopolies due to the antiquated segregation of the profession (see the Clementi Review4). The need to provide alternative service models is necessary to meet client needs. Requiring patent attorneys to be legally qualified is one such measure.
The introduction of MDPs enables such dually qualified practitioners to practice across both professions under a single business structure.
In Australia, the Institute of Patent and Trade Mark Attorneys website states that as at 2008 there are 420 registered patent attorneys in Australia. Only a handful of those are dually qualified as legal practitioners, and even fewer still actively practice across both professions. Indeed dual qualifications, rare as they are, tend not to be exploited by most firms, which “pigeon-hole” practitioners according to one professional qualification or the other and typically restrict practice along professional boundaries. Indeed most intellectual property firms offer legal and patent attorney services as independent business arms.
There is considerable resistance to dual qualification and multidisciplinary practice. Such resistance takes place when professional boundaries are shifted (the Clementi Review4 is still hotly debated in UK legal circles).
However, shifting the boundaries and expanding training and qualification requirements would be beneficial to both practitioners and their clients.
1Place Patent Attorneys + Solicitors was the first multidisciplinary legal practice registered in New South Wales in which legal services in intellectual property matters were offered in conjunction with patent and trade mark attorney services under a single legal structure. We took the approach that having dually qualified practitioners offered a significant advantage in terms of client service and the depth, breadth and quality of intellectual property services.
1 Place Patent Attorneys and Solicitors is:
- a multidisciplinary practice that is more than the sum of the each qualification’s part;
- a specialised IP boutique practice, provides access without requesting that you have a “big end of town” budget; and
- staffed by practitioners who dually qualified as solicitors and trade mark / patent attorneys.
Please contact 1 Place Patent Attorneys and Solicitors for more information.
- George and Ira Gershwin ( 1937) “”You say tomato, I say tomahto … Let’s Call the Whole Thing Off”
- Section 200(3), Patents Act 1990 (Cth).
- Section 200(2), Patents Act 1990 (Cth).
- MULTIDISCIPLINARY PRACTICES: Legal Professional Privilege and Conflict of Interest (2000), Law Council of Australia’s paper available at: http://bit.ly/eQqFww
- Stephen Mayson (May 2010) IF ABSs ARE THE ANSWER, WHAT’S THE QUESTION? Legal Services Institute available at: http://www.college-of-law.co.uk/About-the-College/Institute-Papers-PDFs/Mayson-20(2010)-20If-20ABSs-20are-20the-20answer,-20what-s-20the-20question-1-/
- Review of the Regulatory Framework for Legal Services in England and Wales –
Final Report by Sir David Clementi | PDF file of Final Report [653kb] | PDF file of Appendices to the Final Report [350kb] [15 December 2004]