Wednesday, 23rd October, 2013

One step closer: integrated Australian and New Zealand patent application and examination

On 23 October 2013, Minister Craig Foss announced that the New Zealand Government has approved the implementation of a single application process and single examination process for New Zealand and Australian

Hot on the heels of the Patents Act 2013 comes a press release from the Commerce Minister signalling the first amendments. On 23 October 2013, Minister Craig Foss announced that the New Zealand Government has approved the implementation of a single application process (SAP) and single examination process (SEP) for New Zealand and Australian patent applications. These processes will require amendments to the act.

The government hopes these processes will enable the Intellectual Property Office of New Zealand (IPONZ) and IP Australia to share resources, reduce duplication and cut administrative costs to improve patent examination outcomes.

IPONZ and IP Australia have developed high level designs for the SAP and SEP, which are outlined in the Cabinet paper and Regulatory Impact Statement. The detailed frameworks to implement the SAP and SEP are works in progress.

The SAP and SEP will both be optional. Applicants will still have the choice of filing separate patent applications in Australia and New Zealand. Also, applicants that choose to file in both countries using the SAP will be able to either:

  • enter the SEP
  • have their Australian and New Zealand applications separately examined by IP Australia and IPONZ, respectively.

The SAP will allow applicants to apply for patents in both Australia and New Zealand via online portals that will be hosted on the websites of IP Australia and IPONZ.

Applicants that file separate patent applications in Australia and New Zealand, or that file simultaneously using the SAP can choose to enter the SEP. If the applicant chooses SEP, the applications will be allocated to an examiner at IP Australia or IPONZ. We understand that it is likely that the decision as to examiner allocation will be made by IP Australia and IPONZ depending on the available examination resources - the applicant will not be able to select. The examiner will then examine the Australian application under Australian law and the New Zealand application under New Zealand law. The SEP will proceed until the applications are either accepted or refused, after which the Australian and New Zealand applications will be appropriately processed by IP Australia and IPONZ, respectively.

If the applications are accepted, the SEP will still result in two separate patents being granted. It is also possible that the applications could be accepted in one country and refused in the other, due to substantive differences in patent law and practice between Australia and New Zealand.

The SAP is expected to be implemented in early 2015. An SEP pilot program will start at the same time as the SAP, and will run for 18-24 months. The SEP will then be reviewed, including public consultation, to ensure that it operates smoothly and provides the expected benefits. Cabinet currently proposes to either fully implement or stop the SEP within three years of the start of the pilot program.

Before the SAP and the SEP pilot program can begin, the government intends to pass amendments to the Patents Act 2013. For example, amendments that allow IP Australia and IPONZ officials to access documents and act on behalf of one another.  New regulations are already required under the Patents Act 2013. These regulations are currently being drafted and will now also need to enable the SAP and SEP. Finally, a bilateral arrangement with Australia is also required.

Similar amendments will also be required in Australia. The Intellectual Property (IP) Laws Amendment Bill 2013 was introduced into the Australian Parliament on 30 May 2013. Among other things, that bill included amendments to the Australian Patents Act to enable the SAP and SEP.  That bill lapsed ahead of the Australian parliamentary elections in September 2013, but is expected to be re-introduced.