(1)This section applies to —
(a) communications as to any matter relating to the protection of any invention, design, technical information, or trade mark , or as to any matter involving passing off , and
(b)documents, material or information relating to any matter mentioned in paragraph (a).
(2)Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the patent attorney had at all material times been acting as the client's solicitor.
(3) In subsection (2) “patent attorney ” means—
(a)a registered patent attorney or a person who is on the European list,
(b)a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on the business of a European patent attorney, . . .
(ba)an unincorporated body (other than a partnership) entitled to describe itself as a patent attorney, or
(c)a body corporate entitled to describe itself as a patent attorney or as a company carrying on the business of a European patent attorney.
(4). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Cases considering section 280 5
[2012] EWCA Civ 726 · 31 May 2012Limits
The court treated statutory patent-attorney privilege as relevant to comparing professional roles, but rejected the suggestion that privilege itself determined the employee or solicitor distinction or overrode restraint-of-trade policy. (see paras [22]; [78])
Defines the communications covered by the statutory privilege as those concerning protection of an invention, design, technical information or trade mark, or passing off. The court used this scope when comparing patent-attorney and solicitor work. (see para [21])
Confirms that qualifying communications involving a patent agent are privileged from disclosure in legal proceedings in the same way as solicitor communications. The court relied on this parity when rejecting a rational distinction between patent attorneys and solicitors. (see paras [21]-[24])
Confirms privilege for communications between a person and their patent agent. The court used this as part of its reasoning that an in-house patent attorney’s litigation role is not materially different from an in-house solicitor’s role. (see paras [21]-[24])
Confirms privilege for communications made to obtain, or in response to a request for, information sought to instruct a patent agent, on the same basis as solicitor-related communications. It supports the parity of professional treatment. (see paras [21]-[24])
[2011] EWHC 74 (Pat) · 21 January 2011Interprets
Provides privilege for communications and materials relating to protection of inventions, designs, technical information or trade marks, and passing off, where a patent attorney acts for a client. (see paras [17]-[20])
Identifies the matters to which the statutory patent attorney privilege applies. The court notes that its wording is narrower than regulation 3 of the CIPA Higher Courts Qualification Regulations 2007. (see paras [17]-[18])
Forms part of the statutory subject matter for privilege concerning passing off and related documents, materials or information. (see para [17])
Confers privilege in like manner as solicitor-client privilege for relevant communications, documents, materials and information. (see para [17])
[2013] UKSC 1 · 23 January 2013
The statutory extension of privilege to patent attorneys confirmed that Parliament had legislated on the assumption that common law privilege was confined to professional lawyers (see paras [35] and [68]).
What each judgment says about section 280 is in the case-law panel in the full Act.