Thursday 11 February 2016

Proposal to align New Zealand and Australian patent law

The Patents Act 2013 was intended to significantly overhaul New Zealand’s patent laws which, until recently, were operating under the Patents Act 1953. It was always going to be an ambitious project.

This week a bill to amend the Patents Act 2013 passed its first reading in Parliament. The ‘Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015’ fixes up a few drafting errors in the Patents Act. It also introduces a couple of things that couldn’t be done earlier as they needed coordination with Australia.

The Commerce Select Committee will now call for submissions and report back to the House by 10 August 2016.

The main aims of the bill are to:

  • establish a single joint registration regime allowing practice in both Australia and New Zealand with single qualification requirements and professional standards
  • enable a single patent application and examination process to be implemented between the Australian Patent Office (IP Australia) and the Intellectual Property Office of New Zealand (IPONZ) with the intended effect being that New Zealand businesses would no longer have to duplicate patent applications in both jurisdictions
  • exclude lack of unity of invention as a ground on which third parties can oppose the grant of a patent on an accepted patent application.

Single joint registration regime

The bill will retain the safeguards that patent attorney services are only offered by suitably-qualified patent attorneys. The qualification process and subsequent regulation of New Zealand patent attorneys has remained essentially unchanged for more than 60 years. There is a view that the framework falls well short of modern standards for occupation regulation.

The proposal is to do away with the New Zealand registration regime and extend the existing Australian registration regime to cover New Zealand resident patent attorneys. A single trans-Tasman regime will apply to patent attorneys in both countries.

The stated benefits are that it will:

  • save patent attorneys time and cost because they are able to practice on both sides of the Tasman
  • break down barriers to patent attorneys offering their services on a trans-Tasman basis
  • encourage competition within the profession for the benefit of businesses that need their services.

These benefits were questioned in the House, with one member saying that patent attorneys in New Zealand have raised some concerns around the likely increased regulatory and business compliance costs to register and practice in New Zealand.

Single patent application and examination process

The bill is intended to enable a single patent application and examination process to be implemented between IP Australia and IPONZ. It was observed that most patent applications filed in New Zealand are also filed in Australia.

Under the proposed regime, a patent applicant will make a single application to a trans-Tasman portal. The applicant will nominate New Zealand and/or Australia in the application. The trans-Tasman patent application will create a New Zealand application, an Australian application, or a pair of applications.

Australia and New Zealand will remain members of the Patent Cooperation Treaty, an international patent law treaty that already provides a streamlined approach for filing applications in multiple jurisdictions. In fact New Zealand and Australia have signed up to pilot a filing mechanism known as ‘ePCT’ that may achieve the single patent application process at a fraction of the cost.

The single examiner process recognises that pairs of applications undergo separate examination processes in each country to determine whether the application relates to a patentable invention. In particular, each country examines its application to determine whether the invention claimed is new, involves an inventive step, and is useful.

This is said to result in significant duplication of effort and resources to perform essentially the same task. More efficient patent examination processes will remove duplication for patent examiners in both countries. These improved processes have the potential to create significant savings for patent applicants.

However, these cost savings have not yet been quantified. It is hoped that this data will be made available to the public to permit informed submissions to the Commerce Select Committee.

Lack of unity

The bill also excludes lack of unity of invention as a ground on which third parties can oppose the grant of a patent on an accepted patent application.

The Patents Act 2013 allows a grant of a patent to be opposed on the ground that an accepted (allowed) patent application claims patent protection for more than one invention. This issue was not a ground of opposition under the Patents Act 1953.

There is no clearly-stated policy intention to introduce lack of unity of invention as a ground of opposition. It is recognised that if this ground remains, patent applicants may be unfairly disadvantaged. The only way a patent applicant could deal with an opposition on this ground is to amend the application to one invention. The applicant would lose patent rights to the other invention(s).

There was general agreement to fix this drafting error. However, there was a question raised as to whether this change should be applied retrospectively.

Further steps

There were the usual observations that the bill will ‘not be front-page news’ and that ‘talking about patent law is a sure-fire way to lose people to talk to at parties and a sure-fire way to fall asleep at night’. However there was also acknowledgement that intellectual property is critically important to the future of New Zealand and its prosperity.

The Commerce Select Committee has called for public submissions by 24 March 2016. Stakeholders are encouraged to make their views known. More information about the submission process is available here.