Implementation of the single trans-Tasman patent application (Australia and New Zealand) appears to have been terminated through the surprise recommendations of the New Zealand government’s Commerce Committee issued on 13 July 2016.
New Zealand government’s Commerce Committee published an updated Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill on 13 July 2016 which recommended the deletion of proposed new section 220A implementing the new single patent application process (SAP) and a single patent examination process (SEP) in New Zealand. The Commerce Committee considered that the process was unlikely to provide significant benefits to New Zealand including:
- Lack of benefits either to NZ businesses or to NZ patent attorney firms making applications on their behalf: the system was considered to only provide very small cost and time savings, applicants would still be required to consider separate objections to both applications, and to formulate different responses to those objections.
- Increased administrative costs to NZ businesses through increased costs of IPONZ examination and filing fees.
- Significant IT infrastructure costs to establish and implement a SAP, and ongoing maintenance costs.
- No significant advantages in work-sharing between examiners in IPONZ and IP Australia due to increased online availability of the examination reports from other patent office, and implementation of the “Global Patent Prosecution Highway” program in many patent offices around the world.
- Proposed implementation of ePCT – an electronic procedures for filing patent applications under the Patent Cooperation Treaty (PCT), which is administered by the World Intellectual Property Organisation (WIPO).
If (and its seems more likely when) the recommended amendments are accepted by the New Zealand government, the single trans-Tasman patent application implementation process will cease, bringing an end to the implementation process started by IP Australia and the Intellectual Property Office of New Zealand (IPONZ) in October 2011.
The main features of the system would have involved:
- Each office having an online filing portal allowing an application to be filed in both countries in a single transaction. A filing date and application number would be assigned to the applications in accordance with the law and practice of each country.
- Patent applications for the same invention will be examined by a single examiner from either Australia or New Zealand. The process will take account of the separate national laws and will produce two separate Australian and New Zealand patents.
- IPONZ and IP Australia will each retain their existing responsibilities for granting or refusing the patents.
It is notable that patent attorneys from both Australia and New Zealand have long been able to register and therefore practice in each country under previously agreed trans-Tasman arrangements. Therefore, despite the cessation of the single trans-Tasman patent application, it will be business as usual for patent attorney firms on both sides of the Tasman sea, just without the option of filing related applications in each country through a single portal.