A unitary patent examination process for Australia and New Zealand

A unitary patent examination process is soon to be established for applications before the Patent Offices of Australia and New Zealand. Whilst this is believed to be a world first, we note at the outset that any such process is at least three years away.

This development is part of the Single Economic Market (SEM) reforms, as agreed between the Australian and New Zealand Governments in August 2009. These reforms encompass not only intellectual property, but also competition policy, consumer protection, accounting standards, securities offerings, cross-border insolvency and company registrations. The proposed legislative framework thereby aims to accelerate and deepen trans-Tasman regulatory integration. The stated aims of SEM as they pertain to intellectual property are:

  1. A unitary application process for patents in both jurisdictions – the first step (examination) being the subject of the present article
  2. A single trans-Tasman regulatory framework for the patent attorney profession. Progress toward such a framework effectively began when New Zealand’s Patents Bill 2008 was “divided out” at the Select Committee stage; the resultant Patent Attorneys Bill 2010 is presently scheduled for its second Parliamentary Reading – and is expected to be passed later this year
  3. A single trade mark regime, an announcement being expected within the next few months
  4. A single trans-Tasman regime for plant breeders’ rights.

As mentioned above, the proposed unitary examination process is the first step on the road to a single trans-Tasman patent application process. Under this proposal, “equivalent” Australian and New Zealand patent applications will be examined by a single examiner from either IPAustralia or the Intellectual Property Office of New Zealand (IPONZ).

The Examiner will be required to take account of the respective national patent laws and will produce two separate examination reports, ultimately resulting in distinct Australian and New Zealand patents. Examiners will undergo the additional training necessary to grant or refuse applications under the respective national laws of each country. Accordingly, it will not be necessary for Australian and New Zealand patent laws to be identical; indeed, they differ significantly at present. Thus, whilst the end product remains the same, the proposed new process aims to reduce any present duplication of work by either patent office.

Any such unitary examination process carries several potential benefits to patent applicants in Australasia – both foreign and local:

  • Potential savings in professional fees and patent protection costs;
  • A quicker examination process, which may enable a patentee to get their invention to market more quickly; and
  • Consistent and high-quality patent examination, which invariably results in more robust IP rights and may give local patentees greater confidence when seeking IP protection abroad.

This initiative will be implemented in two stages. In the first stage, both countries will rely on each other’s work to the extent possible, in order to build confidence and simplify processes. The second stage will be the single examination process, where the efficiencies and benefits of this initiative should be realised. Of course, how any such initiative is implemented in practice remains to be seen.

Shelston IP will continue to monitor progress regarding the Australasian SEM – and will report on progress as it relates to intellectual property rights within our two jurisdictions.