The Australian Patent Office (“IP Australia”) will soon be able to receive Patent Applications on behalf of the Intellectual Property Office of New Zealand (“IPONZ”).

As part of the Single Economic Market (“SEM”) outcomes framework, IP Australia and IPONZ have been working on a three-year implementation plan for a single Application and examination process to remove duplication and to increase efficiency.

Both IPONZ and IP Australia will be able to receive Patent Applications under the new regime, whereby a filing date and an Application number will be assigned to each Application in accordance with the law and practice of each country.  The benefit for Applicants is that they will be able to provide all the required information and fees for both Patent Applications in a single transaction.

Where there are corresponding Australian and New Zealand Patent Applications for the same invention, under the new single Patent examination process, these will be examined by a single Examiner, who will take the differences in national laws between the two countries into account. Two separate Australian and New Zealand Patents will be issued. This process is anticipated to commence by June 2014.

Advantages of proceeding via IP Australia

Unlike IPONZ, IP Australia currently already acts as a Receiving Office, International Searching Authority and International Preliminary Examining Authority under the Patent Corporation Treaty (“PCT”). New Zealand PCT Applicants use the services of IP Australia for the International Stages. Australian Patent Attorneys are also dual-registered as New Zealand Patent Attorneys. Accordingly, IP Australia is well placed to also accept and examine New Zealand Applications under the new single Application and examination process by June 2014.

Furthermore, in contrast to New Zealand Patent Law, under which there is currently no inventive step requirement for patentable subject matter, Australia has recently raised the standard of the inventive step requirement, such that it is now in line with that of Europe. Legislative changes have brought other aspects of Australian Patent Law into line with that of Europe and the United States. Australian Patent Examiners are accordingly trained and experienced in examining Applications in accordance with inter alia, absolute novelty, inventive-step, support and sufficiency patentability requirements that are similar to those in Europe and the United States.

New Zealand Examiners hitherto have not had to address the issue of inventive step and the test for novelty in New Zealand has been that of local novelty.  Accordingly, the New Zealand Examiners will have to re-adjust their thought processes in order to accommodate Australian Patent Law requirements.  This could be an early baptism of fire for them despite the efforts by IPONZ to educate them in Australian Patent Law.  Undoubtedly, as time passes, the New Zealand Examiners will be equally as efficient as their Australian counterparts in examining Australian Patent Applications.

While Australian and New Zealand Patent Applications will be examined by a single Examiner under the national laws of the respective countries, Patent Applicants are expected to receive a focussed examination of Patent Applications by IP Australia, taking into account developments in prosecution of corresponding Applications in other countries. This could reduce prosecution costs for Applicants by facilitating the consolidation of prosecution arguments and amendments to Patent Claims.

IP Australia already has the infrastructure in place for implementing the single Application and examination process. While detailed procedures will only be implemented in 2015, Applicants intending to file separate Patent Applications in Australia and New Zealand may wish to consider the cost and examination benefits of filing both Applications at IP Australia and taking advantage of the single Application and examination procedure.