The purpose of this document is to set out the standard terms of engagement, on the basis of which we accept instructions from, and undertake work for, our clients. These terms will govern the professional relationship in the absence of any supplementary or overriding contractual arrangements. If you have any questions or concerns about these terms, you should clarify them with us before proceeding to instruct us. This is important because any instructions that we receive from you are only accepted contractually on the basis that you have read, understood and accepted our general Terms of Engagement
We are one of the leading firms of intellectual property specialists in Australasia. We act for local and foreign corporate clients, investors, funded start-ups, cooperative research centres, and research institutes that are serious about their intellectual property and are in a position to exploit it. Our aim is to enhance the businesses of our clients and to maximise their competitive advantage by assisting them strategically to capture, develop and commercially exploit their intellectual assets. To do this, we employ the best staff available at every level within our organisation. Our charges generally reflect the level of professional expertise that we provide and the value that we add to our clients’ businesses.
We may not accept instructions if we perceive either that we would not be able to add significant value to a prospective client’s business, or that a prospective client is not in a position to pay charges commensurate with the quality of service we provide. Through this “win-win” philosophy, we are better able to provide the highest possible levels of service and advice to those clients that we do take on.
Principal Responsible for each Client
It is our policy to appoint a Principal of the firm to be ultimately responsible for managing the relationship with each client. The responsible Principal may delegate aspects of the work to the most appropriate author having regard to the level of expertise and technical specialisation required for each matter. The responsible Principal for each client will, however, maintain an overview of the portfolio and can be contacted at any time to address any specific queries or concerns.
We structure our professional and support staff into teams, usually on the basis of technological or legal specialisation. In the case of particularly large portfolios or where diverse technologies are involved, we may assign multiple teams to a single client. We may also establish specific client based teams where required. This enables us to maintain relative continuity in work flow and a high degree of responsiveness, notwithstanding occasional but inevitable absences from the office by individual team members. These structures also allow us to manage larger client portfolios in a cohesive manner, ensuring that each aspect of the work is undertaken at the most appropriate level and in the most cost-effective manner, without losing sight of the strategic overview.
Before starting any substantive work based on new instructions, we will endeavour to confirm our understanding of those instructions in writing. We will also endeavour to provide you with an estimate of the charges that are likely to be involved in undertaking the work. We emphasise that any such estimate is not a fixed quote or a cap on what we may charge you. We will, however, endeavour to contact you promptly if we become aware at any stage that a previous estimate is likely to be exceeded. Fee estimates will be provided in writing except in matters of urgency, in cases where you have explicitly indicated that this is not required, or in cases where this understanding is implicit on the basis of a long-standing relationship.
Professional Fees and Charges
Our fees are primarily calculated in accordance with a regularly updated schedule of charges, the details of which can be provided to you upon request. Our fees are usually based on hourly rates, pre-set scale items, or a combination of both. Hourly rates are charged in six minute units and vary according to the expertise of the professionals involved, as well as the nature of the work performed. Our charges may further be adjusted to take account of the skill level required, the urgency of the matter, the level of value added, the level of risk involved and other relevant factors. We may also vary our charges on a case by case basis to account for the use of our unique precedent libraries, knowledge management systems, and other intellectual capital.
Disbursements and Tax
Any disbursements such as travel expenses, barristers’ fees, official fees, consultants’ fees and foreign associates’ charges will be billed in addition to our professional fees and will be itemised separately on our invoices. Any Goods and Services Tax (GST) that is applicable will be passed on to you and will also be itemised separately on our invoices. Unless indicated otherwise, however, our fee estimates are exclusive of GST.
Billing Arrangements and Trading Terms
We will generally bill you on a monthly basis, unless at our discretion the circumstances of a particular case dictate otherwise. Unless agreed otherwise, our trading terms are 14 days from the date of invoice. Accordingly, any queries must be raised within this period. Direct credit payments are encouraged. We reserve the right to charge interest at 15% per annum on any amounts overdue, and also to initiate legal proceedings for debt recovery if any invoice is overdue by more than 30 days. Should we incur costs in connection with collection of fees or disbursements, these will be recoverable from you, in addition to the interest charges.
Acting as Agent
We or a related entity may agree to act as your undisclosed agent in cases where you do not wish your identity or involvement to be disclosed. If we do, you agree to indemnify us against all costs and liabilities we incur. Those costs and liabilities include our fees and disbursements. In cases where a legal action is unsuccessful, they may also include the other party’s legal costs and damages and the costs of complying with the orders of a court or other body. We may seek funds or other security or protection from you in advance as a condition of acting as your agent.
Our normal practice is to seek funds in advance to cover anticipated fees and expenses in any new matter and to seek major disbursements in advance in ongoing matters, particularly where these are likely to be of a significant order of magnitude. We reserve the right at our sole discretion to undertake independent credit enquiries on any client at any time, and we do this routinely before accepting instructions from any new client. It is also our policy to assign internal credit ratings to all of our clients and these are reviewed on an ongoing basis. We reserve the right to pass credit information to our debt collectors, and to notify credit agencies of any serious default.
Modes of Communication
We will endeavour to communicate with you in whatever mode that you prefer. Our preferred mode for routine communication is generally electronic, particularly telephone and e-mail. In communicating via these means, our clients accept, because of the possibility for unauthorised interception, manipulation and non-delivery, that security, confidentiality and data integrity cannot be absolutely guaranteed. For this reason, we will normally endeavour to confirm any substantive opinion or advice in hard copy. Unless clearly stated otherwise, any opinion or advice provided in electronic form should also be regarded as expressing the views of the individual author and subject to final confirmation on letterhead.
In Australia, matters involving intellectual property commercialisation and enforcement will usually be handled through our associated law firm, Shelston Lawyers. The principals of Shelston Lawyers are also principals of Shelston IP, and appropriately qualified staff may carry out work for both firms. You have the right under New South Wales law to request further details of bills issued by Shelston Lawyers, and to have its fees and charges reviewed by a Court.
Shelston IP Pty Ltd (ACN 608 104 070) (Shelston IP) and Shelston IP Lawyers Pty Ltd (ACN 607 899 758) are incorporated private companies ultimately owned by IPH Limited, a public company that is the holding company for a number of intellectual property professional services businesses operating under different brands across the Asia-Pacific region.
Shelston IP is an incorporated registered patent and trade marks attorney and is bound by the Code of Conduct for Trans-Tasman Patent and Trade Mark Attorneys 2018 (Code of Conduct). For the purposes of the Code of Conduct, Shelston IP is a member of an “ownership group”. The ownership group comprises Shelston IP Pty Ltd, Shelston IP Lawyers Pty Ltd, Spruson & Ferguson Pty Ltd, Spruson & Ferguson Lawyers Pty Ltd, AJ Park IP Limited, AJ Park Law Limited, Pizzeys Patent and Trade Mark Attorneys Pty Ltd, GH PTM Pty Ltd and GH Law Pty Ltd (each GH entity operates under the Griffith Hack brand in Australia) and Applied Marks Pty Ltd. Additional incorporated patent and trade mark attorney entities operating as ‘Spruson & Ferguson’ and ‘Pizzeys’ form part of the IPH Ltd group outside Australia and New Zealand.
Information on all legal entities forming part of the IPH Limited group is available at www.iphltd.com.au/about-iph.
Each of the IPH professional services attorney businesses (Shelston IP, Spruson & Ferguson, AJ Park, Pizzeys, and Griffith Hack) operates independently from one another in the provision to clients of attorney professional services. *The Applied Marks business operates independently from each of the IPH group professional services attorney businesses but may refer clients to those businesses for the provision of certain services. For more information on how we manage group relationships, including appropriate disclosures of group relationships and management of actual or potential conflicts of interest, please see our ‘Group Relationships Statement’ on our website.
*A group business may in some cases engage or be engaged by another group business as a foreign agent or lawyer.
Business Development Incentives
Like many organisations, Shelston IP’s remuneration framework includes business development incentives, whereby employees may receive a financial benefit for introducing or referring significant new work to Shelston IP or other entities in the IPH Limited group.
Pursuant to the Code of Conduct, the IP attorneys engaged in your work will have appropriate competency to perform your work, including by drawing on relevant technical expertise where appropriate. Information about the competencies and qualifications of the registered attorneys or legal practitioners providing services to you are on our website. Where required under the Code of Conduct and we have not previously done so (see Fee Disclosure and Professional Fees and Charges above), we will also inform you as to the procedures, costs and timing of undertaking the work. If such matters become materially different, we will inform you.
IP Renewals and CPA Global Limited (CPA)
It is our standard practice to handle our clients’ IP maintenance and renewal fees through CPA Global Limited (www.cpaglobal.com). CPA is a leading specialist renewals business and is Shelston IP’s preferred partner for the renewal of our clients’ intellectual property rights worldwide. The resultant economies of scale allow us to manage large and complex renewal portfolios on a more cost-effective basis. There is no obligation upon our clients to use the services of CPA. However, where those services are used, Shelston IP shares relevant client information with CPA to enable it to provide the specified renewal services. Shelston IP receives a financial benefit from CPA for clients who use CPA’s services.
Privacy and Confidentiality
Consent to use and disclosure
In order for us to provide services to you, we may need to disclose information provided by or with respect to you (‘Information’) to third parties such as government authorities, courts, foreign patent and trade mark agents or lawyers, renewals agents, counsel and experts. For the purposes of conducting our business, we may also disclose information to our associated entities that form part of the Shelston IP business.
In order to provide our services, we also rely upon back-office, non-professional services provided by non- attorney entities within the IPH Limited group, including IT, insurance, finance and accounting services. Where reasonably necessary to satisfy corporate governance, management and reporting responsibilities, such as financial and regulatory reporting, compliance, corporate accountability and oversight and risk management responsibilities, we may also be required to share certain Information with IPH Limited. We may disclose Information to such group entities for these purposes. Any information shared for such purposes is disclosed only to the extent reasonably required, is used only for the purposes provided and remains subject to confidentiality. As set out in Privacy and Confidentiality above, non-public Information is not shared with any other IPH professional services attorney business (unless engaged as a foreign agent or lawyer).
You consent, on your own behalf (or if you are asking us to act on behalf of another person or entity, on behalf of that person or entity), to the sharing of Information for these purposes.
Conflicts of Interest
In the event of our becoming aware of a conflict of interest at any stage, we would immediately alert you to the fact. We would also proceed actively to resolve the conflict as promptly as possible, following established principles of law, professional ethics, and good client relationship management. Our detailed policy on the management of conflicts of interest can be provided on request. As noted in Ownership Structure above, our Group Relationships Statement available on our website also contains more information on how we manage IPH Limited group relationships, including appropriate disclosures of group relationships and management of actual or potential conflicts of interest.
Disposal of Documents
We reserve the right to dispose of our files at any time beyond seven years following the date of completion of a matter. As a matter of policy, this is defined as the date of the last written communication on our file or our final invoice (save for correspondence or accounts associated solely with renewals), whichever is later. This would not apply to documents explicitly preserved for safekeeping. Accordingly, if any documents are required to be retained for more than seven years beyond the completion of the relevant matter, you should advise us of that fact in good time.
Restrictions on Use of Advice
Unless previously agreed by us in writing, no advice, service or information provided by us to any client may be used or relied upon by any third party. We will accept no liability in respect of any third party’s use or reliance in contravention of this restriction.
Failure to Comply with Terms
Failure of any client to comply with our terms of engagement may, at our sole discretion, result in temporary suspension of work, or permanent termination of the engagement. As an interim measure, it will normally result in a downgrading of our internal credit rating for that client. This will have implications in terms of credit limits and may also result in our declining to accept further instructions.
Terms and Termination
Any work that we undertake on your behalf will be deemed to be conducted on the basis of these terms and conditions, unless they are subsequently modified or waived by another written agreement, to which we are a party. Either party may terminate our engagement on a particular matter or generally, by giving notice to that effect at any time. Should this occur, you will continue to be responsible for our fees and charges and for any costs incurred or accrued before the date of termination, in addition to any fees, charges and costs arising from any consequential work that we may subsequently be required to do including, but not limited to, recovery of outstanding debt.
Right of Lien
In the event of termination, by either party and for any reason, we will maintain a specific as well as a general right of lien over all of your files. This right is ongoing and entitles us to retain possession of all files and related documents as security, until such time as all charges have been rendered, all accounts have been settled, and all other obligations have been satisfied.
Subject to these terms and conditions, your acceptance of which is confirmed by your electing to instruct us, we welcome you as a client of the firm. We look forward to working in close partnership with you, to maximise the value of your business by capturing, exploiting and leveraging your intellectual property.