Trans-Tasman Patent Changes – Single Application and Examination?

Article  \  25 Oct 2013

The New Zealand Minister of Commerce, Craig Foss, has announced Government approval to implement a single application process and single examination process for New Zealand and Australian patent applications.

“Single patent application and examination 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,” said Mr Foss.

“Around 5700 applications filed with IPONZ are also the subject of a corresponding application in Australia and forty per cent of applicants also nominate the same patent attorney for both applications.

“Using an online portal hosted on the IPONZ and IP Australia websites, applicants will be able to apply for patent protection simultaneously in Australia and New Zealand, while a single examiner will assess both applications according to the respective laws.

“The joint processes will mean that more businesses can reduce compliance costs by employing a single patent attorney to manage both applications.

“Two separate and independent patents will ultimately be granted and IPONZ and IPAustralia will each retain their existing responsibilities for granting or refusing the patents,” says Mr Foss.

The change requires a single examiner from either IPAustralia or the Intellectual Property Office of New Zealand (IPONZ) to examine applications under the differing laws of each country. There will be a common approach to issues such as clarity, unity of invention and novelty, however the approach to inventive step issues may differ. In addition, New Zealand and Australia differ on fundamental issues such as allowability of methods of medical treatment and software claims. Australia’s approach to extensions of patent term require pharmaceutical claim structures to be analysed carefully, something not required in New Zealand (as extensions of patent term are not available).  Therefore, while a single examination report may issue, the report may in fact contain a number of contrasting issues that need to be addressed, much as they need to be at the moment.

This change has been discussed for some time and will come as no surprise to New Zealand and Australian patent applicants. What may come as some surprise is the dual nature of the single process. Two applications will still need to be filed. Two examination processes will be required of a single examiner. Two distinct fee structures are likely to be imposed.  Two patents will be granted. Two sets of renewal fees will be needed. As applicants can already use a single patent attorney to manage New Zealand and Australian patent applications, whether the new processes will provide any actual reduction in compliance costs remains to be seen.