Thursday 14 July 2016
Proposed single patent processes for Australia and New Zealand will not proceed
The Australian and New Zealand patent offices have been talking about a single patent application process (SAP) and a single patent examination process (SEP) for a few years now. The proposal made it as far as the New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill before there had been any public consultation.
The Parliamentary Commerce Select Committee heard from the public for the first time when it called for submissions on the Bill. They were told that nobody would use it. So the Committee has recommended that the idea be shelved.
A patent applicant using SAP would have made a single application to a trans-Tasman portal. The trans-Tasman patent application would create a pair of applications – a New Zealand application and an Australian one.
Furthermore, under SEP a single examiner would examine a pair of applications. Previously it had been thought that conducting separate examination processes in each country resulted in significant duplication of effort and resources to perform essentially the same task.
When the Commerce Select Committee called for submissions on the Bill, the overwhelming majority of submitters said it was not needed, and that neither SAP nor SEP would deliver any real benefits to businesses or the patent attorney firms making applications on their behalf.
The Committee agreed, and as a result neither SAP nor SEP will proceed.
Several reasons were given in the full report, including that:
- the time and cost savings achieved by using the SAP process would only be very small
- due to differences in patent law and practice between Australia and New Zealand, the SEP process would be unlikely to offer any significant time or cost savings benefits because applicants would still need to consider and formulate responses to separate objections to both applications
- businesses in New Zealand would incur increased administrative costs as a result of higher examination and filing fees from the IP Office of New Zealand (IPONZ)
- the costs of implementing and maintaining the IT infrastructure required to enable the SAP and SEP processes would be high, and examiners would also require additional training and IT
- information and work-sharing initiatives and platforms already exist within the patent profession, including the ‘Global Patent Prosecution Highway’, and offer alternative means of achieving efficiencies and benefits of a SEP without the need to amend the Act
- the World Intellectual Property Organisation (WIPO), which provides electronic procedures for filing patent applications under the Patent Cooperation Treaty (‘ePCT), is already considering a proposal to allow filing of multiple national phase applications in PCT members states, which would provide similar benefits to a SAP but at a much lower cost to IPONZ.
So for the foreseeable future, it’s business as usual with separate patent applications and examination in Australia and New Zealand. However, joint regulation of the profession is to proceed.
Please get in touch with your usual AJ Park contact if you have any questions or would like to discuss this development.