On August 1 2007 a new evidence law came into force in New Zealand called the Evidence Act 2006 (the new Act).

The new Act extends the scope of registered patent attorney privilege for advice given in relation to "intellectual property". Previously a client could only claim privilege in relation to advice given by a registered patent attorney in relation to "information or advice relating to any patent, design, or trade mark, or to any application in respect of a patent, design, or trade mark, whether or not the information or advice relates to a question of law". In particular, the previous law was considered to exclude advice concerning copyright and passing off.

Under the new Act, "intellectual property" includes copyright, inventions, geographical indications, patents, plant varieties, designs, trade marks, unfair competition, confidential information and all other rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields. It does not however, cover advice given by registered patent attorneys in relation to, for example, contracts. Such advice must come from a lawyer in order to attract privilege.

Although the scope of patent attorney privilege has been extended it does not currently apply to overseas practitioners. The new Act provides for the extension of privilege to an overseas person who is entitled under the laws of his or her country to undertake work which is "normally undertaken", in New Zealand, by a lawyer or a patent attorney. Australia is specifically covered in the new Act. However, the new Act provides for an Order in Council to specify which other countries this rule applies to. When the new Act was passed the legal and patent attorney profession expected that an Order in Council would be passed at the same time specifying the various countries. No such Order has been passed and so at the moment communications from lawyers or patent attorneys overseas are not privileged (unless from Australia) and are discoverable in legal proceedings.

This has made both lawyers and patent attorneys nervous about communications they receive from instructing solicitors and patent attorneys overseas. It is not clear whether it is an oversight or whether it is simply taking longer than expected. There is some speculation that a review of each country's laws to see whether their lawyers meet standards to entitle advice to have legal professional privilege before the New Zealand courts is causing the delay. The New Zealand Institute of Patent Attorneys is working with the New Zealand Law Society to have the government rectify the situation without delay.

Julie Ballance and Kate Duckworth

Baldwins
Level 14, Baldwins Centre
342 Lambton Quay
Wellington
New Zealand
Tel: +64 4 472 1094
Fax: +64 4 473 6712
enquiries@baldwins.com 
www.baldwins.com