Progress toward a unitary patent examination for Australia and New Zealand

Back in February 2011, we reported on moves toward a unitary patent examination process for Australia and New Zealand. This was part of the Single Economic Market (SEM) reforms, as agreed between the Australian and New Zealand Governments in late 2009. We noted that whilst such unitary examination is believed to be a “world first”, any such process would be “at least three years away”.

As two of these three years have now passed, we thought it opportune to provide an update as to where things are currently at.

Firstly, it took until October 2011 for IP Australia and the Intellectual Property Office of New Zealand (“IPONZ”) to agree on an implementation plan – which effectively “reset the clock” – rather than two years down the track, we’re really now only 18 months – half way.

The agreed-upon implementation plan has three main stages: work sharing; single application process; and single examination process. As mentioned previously, the primary goals of the single application and examination processes are to remove duplication and optimise efficiencies.

IPONZ recently reported that “both offices have made good progress in understanding each other’s patent application and examination processes”. They further noted that “the underlying knowledge and skills used by examiners of both offices are very similar. Differences.. ..arise from different office practices and legislation”.

Accordingly, the SEM initiatives therefore seem to be “trapped between a rock and a hard place”. Central to the feasibility of such a scheme is the passage of New Zealand’s Patents Bill 2008, which will more closely align the patents laws of New Zealand with those of Australia. However, one suspects that the Patents Bill will once again stall due to the ongoing Trans-Pacific Partnership (“TPP”) negotiations – and the uncertainty of the legislators over what the final form of the various inclusions/exclusions will be.

The negotiating parties to the TPP have set a target of completing the deal by October 2013. Ensuring that the “horse remains in front of the cart”, this would seem a logical first step before the new NZ legislation can be finalised – and the SEM harmonisation undertaken.

To summarise the SEM, the wider reforms encompass not only intellectual property, but also competition policy, consumer protection, accounting standards, securities offerings, cross-border insolvency and company registrations. The 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;
  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.
  3. A single trade mark regime; and
  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 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 – however, the fewer differences, the greater the overall efficiencies that this new process will deliver. 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 keep clients promptly informed of progress as it relates to their patents rights within our two jurisdictions.