In February 2011, the Prime Ministers of Australia and New Zealand announced plans for the integration of patent filing and examination processes in their respective countries. The initiative is part of a Single Economic Market agenda that seeks to build a single trans-Tasman business environment.
Government documents suggest that integration will eliminate unnecessary duplication, generating potential savings in both patent office and professional fees. Unfortunately, as details of the patent system under the Patents Act 2013 emerge, what looked to be a dubious proposition when announced, now seems even more pointless.
Below we explain more about the single application and single examination process, the current progress, cost-saving issues, fees, key differences that may impact prosecution strategies (in a chart format), whether this process will be easier and cheaper to implement, and look at what's happening now.
The integrated patent system is proposed to be implemented in stages, beginning with work sharing between the two patent offices, progressing to a single application portal and finally a single examination process. The integrated system will not replace the current separate systems for filing in Australia and New Zealand, but rather will provide another option for applicants filing in both countries simultaneously.
Applicants opting for the improperly named 'single application' process will be able to file co-pending applications with IP Australia and the Intellectual Property Office of New Zealand (IPONZ) via a portal available at either office, effecting simultaneous filing in both countries.
If the single examination process is opted for, applications filed in both countries (via either the 'single application' process, or separately) will be examined by either IP Australia or IPONZ.
Applicants will have no say as to which office examines the pair of applications. The examiner will apply the laws of the relevant country to each application. The substantive patent laws of each country will remain separate, so IP Australia and IPONZ will each need to train their examiners to apply the laws of the other country, including relevant case law.
Cost savings in the form of lower official fees and lower patent attorney fees are anticipated.
Legislation supporting the initiative is slowly grinding its way through the New Zealand and Australian parliaments. A key precursor was the enactment of New Zealand's new Patents Act 2013, which comes into force on 13 September 2014.
The Patents Act 2013 replaces the current 1953 Act, removing anachronisms such as a local novelty standard and the inability of examiners to reject obvious claims. The 2013 Act aligns New Zealand patent law more closely with that of Australia and other major trading partners.
In Australia, an IP Laws Amendment Bill that allows IP Australia to delegate powers and functions to a New Zealand patents official has entered Parliament. Analogous New Zealand legislation has yet to be drafted.
An integrated patent system can only provide cost savings to users if jointly applying for and/or prosecuting Australian and New Zealand applications is cheaper than handling the same cases separately, as is the current practice.
Concurrent handling of patent filings and/or examination in both countries will translate to lower official fees only if these cost savings outweigh the cost of training examiners to apply the laws of the other country.
Patent attorney fees
Nearly all applications are already filed electronically at IP Australia and IPONZ. A trans-Tasman Mutual Recognition Arrangement in effect since 1998 has allowed patent attorneys in each country to be registered and act in the other. So, patent attorneys in New Zealand routinely file national phase applications in Australia and New Zealand simultaneously, as do patent attorneys in Australia.
A single application process is likely to save, at best, perhaps 10 minutes of a patent administrator's time, which is unlikely to reduce filing costs by much.
Even if the single examination option is taken, differences between the two systems will require the New Zealand and Australian applications to be handled separately in most cases.
The table below sets out some of the key differences that may impact on prosecution strategies.
|New Zealand (NZ)
Can be filed up until three months from publication of acceptance
Can 'daisy chain' divisional applications
Must be filed before acceptance
Must file and request examination on all divisional applications within five years of international filing date
|Excess claim fees
|AU$110 for each claim over 20
|Statutory subject matter exclusions not present in the partner country
Methods of medical treatment
Methods of diagnosis
Computer programs as such
|Voluntary amendment fees
|Only before direction to request examination and after acceptance
|At all times unless amendment is in response to an objection
|Prior art not citable in the other country
|Earlier priority date AU applications
Earlier priority date NZ applications
Inventor disclosure less than 12 months before filing of the complete specification (only Australia has a 12 month grace period)
|None specified but application must be accepted within 12 months of exam report
|Must respond to first exam report within six months plus one month extension; application must be accepted within 12 months of exam report
Different strategies will be needed to obtain the broadest claims available under the laws of each country, necessitating separate files, specifications and claim sets for each application, as is the case now. The differences in response deadlines may even preclude simultaneous handling of the cases.
So how will an integrated Australia/New Zealand patent system make it easier and cheaper for patent attorneys to prosecute Australian and New Zealand applications filed together? It won't. It will be exactly the same as it is now.
The plan was instigated after very little consultation with the patent attorney profession, or their clients - the intended beneficiaries of the new system. This was despite the fact that most of the heralded cost savings were supposed to result from reduced patent attorney charges.
Patent attorneys were perplexed from the outset as to how a joint examination process could reduce costs in the absence of a shared patent system, such as in Europe. Now that the New Zealand Patent Regulations seem to be to moving New Zealand patent law further away from that of Australia, we are completely in the dark!
Trials of both the single application process and single examination process are planned for 2015, assuming the necessary legislation is in place. If uptake and/or cost savings are low, the initiative may be abandoned altogether.
It will be interesting to see what Australian and New Zealand patent applicants make of the new option.