The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (“Bill”) was read for the first time in Parliament on 9 February 2016 and has now been referred to the Commerce Select Committee for review and submissions.
This Bill aims to amend the Patents Act 2013 (“Act”) to simplify applying for patents in both Australia and New Zealand by creating a single application and examination process and introducing a joint registration and regulation regime for patent attorneys. The Bill also seeks to remedy an oversight in the Act by removing one of the grounds to oppose the grant of patent.
Single Application and Examination Processes
The Bill inserts a new section into the Act which enables IPONZ and IP Australia to work together and delegate to each other so that patents filed in both New Zealand and Australia are covered by a single application and examination process. Essentially, there will be a single initial application process with applicants opting for a single or both countries. If both countries are selected, a single examiner will consider the case but issue two separate examination reports according to the laws of each country. The laws are largely harmonised and this should not create too much difficulty for the majority of cases. Once allowed, separate patents will issue in each country and be administered accordingly.
At present it is estimated that 95% of patents filed in New Zealand are also filed in Australia, so the hope is that the introduction of these processes will reduce costs and effort for both patent filers and the examining offices. It is not surprising that most patents filed in New Zealand are also filed in Australia but many applicants file in Australia and not in New Zealand. Consequently, it is unclear what the economic impact will be for New Zealand due to the likely growth in monopoly rights in the country through the greater ease in obtaining them.
The current proposal is that a pilot program exploring the possible approaches to the Single Examination Process will get under way later in 2016.
Joint Registration for Patent Attorneys
At the same time, the Bill creates a joint registration and regulation regime for patent attorneys in New Zealand and Australia. While many New Zealand patent attorneys are already registered to practice in Australia, the Bill effectively brings New Zealand practitioners under the current Australian regime, mirroring their registration, training and disciplinary structures.
While welcomed as simplifying professional obligations to a single set of requirements across both countries, the issue of training has been contentious in some corners, with the stated aim of increasing competitiveness and cost-effectiveness being somewhat at odds with the requirement that patent attorney trainees enrol for relatively costly university courses (only Australian universities are accredited at present), instead of maintaining the option to qualify via the current IPONZ and New Zealand Institute of Patent Attorneys-administered examinations.
Amendment to the grounds on which a person can oppose the grant of a patent under the Patents Act 2013
Finally, the Bill removes the ability for third parties to oppose the grant of a patent on the basis that the application claims protection for more than one invention. The inclusion of this ground (which didn’t exist under the previous 1953 Act) failed to match the intended policy. It was a simple oversight with the grounds for opposition being set as the same as those during examination. The amended Act will ensure that applicants do not have to remove inventions from a claim set after allowance due to lack of unity, be it a priori or a posteriori lack of unity.