Tuesday, 28th February, 2017

The new trans-Tasman patent attorney regime

On 24 February 2017, a single patent attorney regulatory regime between Australia and New Zealand came into force. This article looks at what the regime is and how this change in regulation affects our patent attorneys.

Single Economic Market

The Governments of Australia and New Zealand are pursuing a Single Economic Market (SEM) agenda that aims to create a seamless trans-Tasman business environment. This ambitious project anticipates changes in areas of insolvency law, financial reporting, competition policy, business reporting, and consumer policy, as well as intellectual property.

In 2009 the two countries agreed to a framework to speed up the creation of the SEM. Under this framework an initiative is evaluated according to whether it delivers a ‘net trans-Tasman benefit’. In other words, each initiative does not need to benefit each economy. Nor does it need to benefit each economy equally to proceed.

The trans-Tasman patent attorney regime is an initiative in the area of intellectual property law believed to deliver a net trans-Tasman benefit. Mid last year we reported on another intellectual property initiative, a single application process (SAP) and a single examination process (SEP), which did not make it through Parliament.

Patent Attorney Services

From 24 February 2017, only registered trans-Tasman patent attorneys will be able to provide ‘patent attorney services’ in Australia and New Zealand. The trans-Tasman patent attorney register records the names of those licensed to provide patent attorney services.

The term ‘patent attorney services’ means the undertaking of any of the following services in Australia or New Zealand for gain:

  • applying for or obtaining patents in Australia, New Zealand or elsewhere
  • preparing specifications or other documents under Australian patent law, New Zealand patent law, or the patent law of another country
  • giving advice about the validity or infringement of patents.

Aspects of the new regime

The new regime includes mechanisms to ensure that patent attorneys have the necessary knowledge, skills and experience to competently provide advice on patents.

All patent attorneys registered in Australia or New Zealand as at 24 February 2017 are automatically entered on the trans-Tasman patent attorney register. New candidates are required to provide evidence of:

  • an academic qualification in a patentable subject matter
  • sufficient knowledge of intellectual property law and practice through completing an accredited course of study
  • relevant patents-related work experience in a patent attorney firm.

Once on the register, trans-Tasman patent attorneys are subject to a professional code of conduct setting out minimum standards of ethical and professional behaviour. Patent attorneys are also required to demonstrate continuing professional education by completing a minimum number of hours of training each year.