These guidelines set out the procedures that the Trans-Tasman IP Attorneys Board (the Board) will typically follow when investigating the actions of an individual registered patent attorney or an individual registered trade marks attorney (attorney) and deciding whether or not to commence disciplinary proceedings before the Trans-Tasman IP Attorneys Disciplinary Tribunal (the Tribunal).
These guidelines do not relate to discipline procedures applicable to an incorporated attorney.
The legislative basis of the Board's role in disciplinary proceedings against an individual patent attorney is regulation 20.33 of the Patents Regulations 1991 (the Regulations). Also relevant are regulations 20.32, 20.34 and 20.35 of those Regulations. All of those regulations apply in relation to registered trade marks attorneys through regulation 20.15 of the Trade Marks Regulations 1995.
These disciplinary procedures are aimed at assisting the Board to be satisfied whether or not an attorney has a reasonable likelihood of being found guilty, by the Tribunal, of an offence under regulation 20.33(2) of the Regulations.
A decision that an attorney is guilty of an offence may only be made by the Tribunal. The focus of the Board's disciplinary procedures is to decide whether or not to commence proceedings before the Tribunal. The disciplinary process is concerned with the conduct of registered attorneys and whether disciplinary action should be taken against them. The Board is not empowered to order or provide restitution to clients of attorneys. Informants seeking restitution for such matters as overcharging or failure to perform services, compensation for damage or for loss of profits, or the return of documents, need to pursue such restitution or compensation in other forums. It should also be noted, that neither the Board nor the Secretary to the Board is able to provide legal advice.
An offence under the Regulations is described in these procedures as an 'offence'. Although the terms 'offence' and 'guilty' are used in the Regulations, the investigation and disciplinary processes are administrative in nature and are not criminal proceedings.
In carrying out their functions in relation to disciplinary procedures, the Board and any investigating officer will observe the routine elements of statutory decision making such as avoiding conflicts of interest, bias and prejudgment, and will not take into account irrelevant considerations.
Unsatisfactory professional conduct
One category of offence is 'unsatisfactory professional conduct'. This category of offence is the less serious of the 2 categories.
The Regulations provide that unsatisfactory professional conduct includes:
- 'conduct, in connection with practice as a registered patent attorney, that falls short of the standard of competence, diligence and behaviour that a member of the public is entitled to expect of an attorney.'
The Regulations also provide that failure, without reasonable excuse, to provide information requested by the Board is itself 'unsatisfactory professional conduct'.
Regulation 20.28A also provides that if an attorney, without a reasonable excuse, fails to notify the Designated Manager in writing within 14 days of being charged with a serious offence (as defined in regulation 20.1), then that failure constitutes unsatisfactory professional conduct. A 'serious offence' is an indictable offence that involves obtaining property or a financial advantage by deception or fraudulent conduct.
The Board has a discretion whether or not to commence proceedings before the Tribunal if the Board is satisfied that there is a reasonable likelihood of the attorney being found guilty of unsatisfactory professional conduct.
Other offences (professional misconduct, registration issues etc)
The Regulations also establish a more serious category of offences for which the Board must commence proceedings if satisfied that there is a reasonable likelihood of the attorney being found guilty. These offences are:
The attorney has been engaged in 'professional misconduct' (defined as set out below) or
- at the time of registration, the attorney did not hold the academic qualifications and knowledge requirements set out in the Regulations or
- the attorney obtained his or her registration by fraud.
The Regulations define 'professional misconduct' as:
- 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 regulations to be professional misconduct.
The investigation process
Initiating an investigation
- The Board can act on 'information' (e.g. complaint information) received from a client of an attorney, any other person, of its own motion. There is no express threshold test that must be met before the Board can decide to initiate an investigation regarding the actions of an attorney. Typically, complaint information received by the Board is forwarded by a client disgruntled with the actions of their current or previous attorney.
Steps that the Board will take
When the Board receives complaint information, a preliminary review of the information is conducted to ensure that the person being complained of is identified, is a registered attorney, and that the nature of the complaint made against the attorney is clear. If the complaint information is insufficient to meet these criteria, further information will be requested from the informant. This preliminary review of any complaint information is typically conducted by the Convenor of the Disciplinary Sub-committee of the Board.
Once the Convenor is satisfied that the complaint information meets the criteria mentioned above, a full copy of the complaint information is normally provided to the attorney and the attorney will be asked to provide a written response to the Board.
The Board will correspond with the attorney via their current address as recorded by the Board.It is the responsibility of each attorney to notify the Board of a change of address within 14 days so that the Board has a current address at which notices can be served.
The complaint information and the attorney’s response will then be placed on the Agenda for consideration at the next meeting of the Board.
Prior to the Board considering any complaint information, members of the Board must consider their ability to bring an impartial mind to making a decision in relation to the complaint.If a member of the Board identifies a conflict or is affected by apprehended bias, they will be excused from being part of any discussions or decisions relating to the complaint information.
It is possible that some complaint information considered by the Board will be dealt with expeditiously without need for further investigation. The Board may consider that a complaint contained in the information is spurious or vexatious and decide not to commence an investigation. In that event, the attorney and informant will be advised of the Board's decision. In other circumstances, it may be that early communication with the attorney concerned would deal with the issue in an efficient manner. These procedures are not intended to constrain the Board from operating flexibly in appropriate circumstances.
After initial consideration of the complaint information, the Board may request further information from the attorney and/or the informant. If further information is received by the Board, that information will normally be copied in full to the attorney or informant as appropriate.
The Board may expressly authorise at least one specified individual (an investigating officer) to carry out further investigations on its behalf as part of its overall investigation and consideration of the complaint information. The investigating officer may be a member of the Board, IP Australia or a consultant.
In conducting an investigation, the investigating officer:
will act on behalf of the Board
will report to the Board following the investigation, or at convenient points during the investigation
may discuss the issues and take evidence from an informant
- in obtaining evidence, the investigating officer should do so in a manner which would facilitate the Board putting together a brief of evidence if the matter was to go to the Tribunal
may request information from the attorney
may be assisted by legal or other advisers
may assess the behaviour of the attorney against the Code of Conduct
may consider whether there is a pattern of behaviour by the attorney.
When conducting an investigation, with or without the assistance of an investigating office, the Board will ensure procedural fairness to the attorney. To this end, the Board will ensure that the attorney is provided with a copy of the complaint information and other material considered by the Board during the investigation.The Board will provide the attorney with an opportunity to be heard in relation to any aspect of the investigation.This opportunity will normally be provided by way of the Board seeking written submissions from the attorney.
At the completion of any investigation, and after affording the attorney procedural fairness, the Board will decide whether there is a reasonable likelihood of the attorney being found guilty of unsatisfactory professional conduct or professional misconduct.If the Board is not so satisfied, the attorney and the informant will be advised.
If the Board decides that there is a reasonable likelihood of the attorney being found guilty of unsatisfactory professional conduct, the Board will then decide whether to exercise its discretion not to commence proceedings against the attorney before the Tribunal.If the Board decides not to commence proceedings, the attorney and informant will be advised.
If the Board decides that there is a reasonable likelihood of the attorney being found guilty of unsatisfactory professional conduct and decides to commence proceedings before the Tribunal, the Board will do so in accordance with regulation 20.35.
- If the Board decides that there is a reasonable likelihood of the attorney being found guilty of professional misconduct, the Board must commence proceedings against the attorney before the Tribunal and will do so in accordance with regulation 20.35.
Responding to a complaint
When requesting an attorney to provide a response to complaint information that has been received by the Board, a three week response period will typically be provided. However, where the next meeting of the Board is set down for a date before that three week period is due to expire, the Board may ask the attorney to provide a response in advance of the meeting date, so that the matter may be considered at that meeting. This approach is adopted to minimize the time between the Board receiving complaint information and the Board being able to initially consider that complaint information.
Where an attorney is unable to respond to complaint information in the time period requested by the Board, the attorney should advise the Board and request a short extension.
In many instances, complaint information received by the Board is incomplete in that it will not detail relevant surrounding circumstances which would place the complaint in context. When responding to complaint information, it is helpful if the attorney provides a brief outline of any history between the attorney and the informant which may be relevant to the complaint. For example, if there is current litigation underway relevant to the complaint, the existence of that litigation should be disclosed to the Board.
The attorney’s response should be accompanied by copies of any documents necessary to support statements made by the attorney. For example, if the complaint relates to the attorney not providing reminders regarding the need to take an action and the attorney states that sufficient reminders were given, copies of such reminders should be provided to the Board as evidence of the attorney’s actions.
Attorneys should remember that many of the members of the Board are experienced attorneys who understand the complexities of an attorney’s practice. This understanding will be brought to bear when considering complaints and the actions of an attorney.
In some instances, an attorney may be unaware of a client’s concerns about their actions and they may only become aware upon being contacted by the Board. In such an instance, the attorney may be able to address the client’s concerns directly with the client and the Board may decide, upon being advised so by the client (i.e. the informant), that no further investigation of the complaint is warranted. However, if the Board remains concerned about the attorney’s actions, the Board may continue to investigate the matter.
When responding to complaint information in circumstances where the attorney recognises that their conduct in respect of a matter may have fallen short of the standard of competence, diligence and behaviour that a member of the public is entitled to expect of an attorney, the attorney may choose to concede the same to the Board and to identify how they will prevent such conduct from occurring again. For example, if a deadline was missed due to poor record keeping, the attorney may identify to the Board new procedures that have been adopted by the attorney to ensure proper record keeping and that appropriate reminders are provided. The primary purpose of these disciplinary procedures is not to punish the attorney but to protect the public. Hence, this type of response may be taken into consideration when the Board is exercising its discretion not to commence proceedings against an attorney where otherwise satisfied that there is a reasonable likelihood of the attorney being found guilty of unsatisfactory professional conduct.
Records of complaints
The Board maintains a record of all complaint information received in relation to attorneys.This record is maintained because regulation 20.33(5) stipulates that the Board may take into account patterns of behaviour when deciding whether or not it is satisfied that there is a reasonable likelihood of an attorney being found guilty of an offence under regulation 20.33(2).
Confidentiality of informants
- Generally, the Board is not able to guarantee the confidentiality of an informant. Fairness to an attorney and transparency of the process will usually require that the substance of the complaint information be put to the attorney. Indeed, the Board will normally provide an un-redacted copy of any complaint information to the identified attorney to ensure procedural fairness to the attorney.
- An informant who wishes to remain anonymous should consult the Board about whether this would be practicable in the particular situation.
- In this context, the documents produced by or on behalf of the Board in an investigation process are also subject to the Freedom of Information Act 1982 and production under any relevant Court subpoena. If a matter proceeds to the Tribunal, the identities of an informant and people who have given evidence are likely to be revealed.
Requiring information from the attorney
- In undertaking its investigations into an individual attorney, the Board is provided with power under the Regulations to request information from the attorney being investigated.
- Regulation 20.34(1) allows the Board to 'request' the attorney who is the subject of the investigation to provide information. The effect of the 'request' is to require the attorney to provide the information requested by the Board, unless the attorney has a reasonable excuse.
- If information is required in the course of the investigation conducted by an investigating officer, the investigating officer will, on behalf of the Board, request that information from the attorney. At what stage in the investigation this power is exercised will be a matter for evaluation in each particular case.
- Regulation 20.34(2) provides that the failure of an attorney to provide requested information, without a reasonable excuse, is unsatisfactory professional conduct.
- Before providing information to the Board, the attorney may wish to take legal advice as to the possible impact of doing so. Attorneys need to be mindful of their responsibilities to their client and more particularly the need to maintain the confidentiality of a former, current or prospective client.
The Board's decision on commencing proceedings
- A threshold test must be met in order for the Board to commence proceedings against an attorney before the Tribunal.
- The Board may commence proceedings before the Tribunal against an attorney if the Board is satisfied that there is 'a reasonable likelihood' of the attorney being found guilty of unsatisfactory professional conduct.
- However, the Board must commence proceedings against an attorney if the Board is satisfied that there is a 'reasonable likelihood' of the attorney being found guilty of professional misconduct, or that the attorney, at the time of his or her registration, did not hold the required academic qualifications or knowledge requirements or obtained his or her registration by fraud.
- In deciding whether or not an attorney has engaged in professional misconduct or unsatisfactory professional conduct, the Board must consider whether the attorney has complied with the Code of Conduct for Patent and Trade Marks Attorneys.
- Regulation 20.33(5) states that the Board may take into account 'patterns of behaviour' of the attorney when deciding whether or not it is satisfied that there is a 'reasonable likelihood' of the attorney being found guilty of an offence.
Commencing disciplinary proceedings
- Once the Board determines that it will commence disciplinary proceedings, the Board must formulate charges and must give notice to the Tribunal.
- The notice to the Tribunal must be in writing and must set out the charges that are made against the attorney.
- A copy of the notice must be given to the attorney as soon as practicable after giving notice to the Tribunal.
Code of Conduct
- From 23 February 2018, all registered attorneys will be required to adhere to the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (Code of Conduct 2018). The Code of Conduct 2018 replaces the Code of Conduct for Patent and Trade Marks Attorneys 2013.
- The Board has also established non-binding Guidelines to the Code of Conduct 2018 to assist people understand the Code of Conduct 2018 and the conduct it covers.