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It's business as usual | Proposed single Trans-Tasman patent application & examination process withdrawn

Date: 19 July 2016
Author: John Landells, David Herman
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On 13 July 2016, the New Zealand Parliament’s Commerce Committee released an updated Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (“Bill”) recommending the provisions regarding the new single patent application process (SAP) and a single examination process (SEP) be removed. For now, it remains business as usual for Australia and New Zealand with both maintaining its own separate patent and examination process, and without the option of filing each application through a single portal. The joint registration and governance regime for patent attorneys in Australia and New Zealand is to proceed as proposed.

Overview

The Bill essentially mirrored the changes as per the Intellectual Property Laws Amendment Bill 2014 (Cth), which the Australian government passed earlier this year, and initially proposed three main amendments to the New Zealand Patents Act 2013:

  • a single trans-Tasman patent application process (SAP) and single patent examination process (SEP)
  • a joint registration and governance regime with Australia for patent attorneys, and
  • an amendment to remove lack of unity as a ground of opposition of a patent application.

Removal of the Single Trans-Tasman Patent Application and Examination Process

The Bill aimed to introduce amendments to the New Zealand Patents Act 2013 allowing for a SAP and SEP arrangement between the Intellectual Property Office of New Zealand (“IPONZ”) and IP Australia. This streamlined approach would have resulted in a single initial application process where applicants can opt for filing in either just one or both countries.  If both countries were selected, a single examiner from either IPONZ or IP Australia would issue a single combined examination report covering separate examination of each counterpart application consistent with the laws of each country. Once granted, separate patent registrations would have issued in each respective country and any enforcement would then proceed independently in each country.

The New Zealand Parliament’s Commerce Committee have surprisingly recommended the deletion from the Bill of the new proposed section 220A which outlined the new SAP and SEP processes in New Zealand. After much concern was raised during public submission, the Commerce Committee considered that SAP and SEP are unlikely to provide significant benefits to New Zealand. The reasons include:

  • Lack of benefits to New Zealand businesses and New Zealand patent attorney firms making applications on their behalf: There would be only very small cost and time savings. The differences in patent law between Australia and New Zealand mean that applications would still be required to consider and formulate responses to separate objections raised for both applications.
  • Increased administrative costs to New Zealand businesses: There would be increased costs of IPONZ examination and filing fees.
  • Significant costs: There would be significant cost to establish a new IT structure to implement an SAP, and ongoing maintenance costs. The SEP would also entail significant costs, including for examiner training and IT.
  • Work-sharing: Currently, examiners in IPONZ and IP Australia already benefit from increased online availability of the examination reports that they and other patent offices and the advancements in international patent examination work-sharing arrangements which aim to increase efficiencies between patent offices, such as the “Global Patent Prosecution Highway”.
  • Proposed ePCT: The World Intellectual Property Organisation (‘WIPO’) is already considering a proposal to modify its electronic procedures for filing patent applications under the Patent Cooperation Treaty (‘ePCT’) system to allow filing of multiple national phase applications, seeking patent protection in a number of PCT members states, which would provide similar benefits to a SAP, but at a much lower cost to IPONZ.

Joint registration for patent attorneys

The Commerce Committee however does support the joint registration regime for patent attorneys in Australia and New Zealand, which effectively brings New Zealand practitioners under the current Australian regime, mirroring their registration, training and disciplinary structures.

Amendment to remove lack of unity as a ground of opposition

At present, s92(1)(c) of the Patents Act 2013 allows the grant of a patent application to be opposed on the ground that the accepted patent application claims protection to more than one invention i.e. “lack of unity”. The Explanatory Note for the Bill makes it clear there was no policy intention to introduce a lack of unity ground at the opposition stage when the Patents Act 2013 came into force, and this amendment simply corrects the Act to reflect this original intention. The Commerce Committee has also recommended that this amendment should apply retrospectively from the date the Patents Act 2013 came into force (13 September 2014), which will provide certainty for patent applicants.

Tags:  Australia, New Zealand, Trans-Tasman Patent Application Examination process withdrawn
 
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