In our article of 14 July 2016, we briefly reported that the majority of the Commerce Committee of the New Zealand Parliament had recommended removing a clause pertaining to a Single Application Process (SAP) and Single Examination Process (SEP) from the New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill. We now provide more details on this recommendation.
These proposed processes were designed to benefit patent applicants with an interest in both Australia and New Zealand by allowing a single patent application to be filed at the Patent Office of either country and examined for both countries.
The Commerce Committee recommended that the clauses relating to the SAP and SEP be removed from the Bill on consideration that the benefits of the SAP and SEP would not be justified by its high implementation costs, low likelihood of use and the lack of substantial time and cost savings to New Zealand applicants.
There are a number of reasons the Committee gave in reaching this recommendation.
- Cost and time savings would be very small. This is because when a single patent application is filed, it would need to be examined separately under the respective patent laws of both countries. Due to differences between the patent laws, objections raised based on one patent law may be substantially different from those raised based on the other patent law. Under such circumstances, the applicant would still be required to consider and formulate different responses for the two jurisdictions.
- The processes would result in an increase in the administrative fee of the New Zealand Patent Office, including the examination and filing fees, as well as an increase in costs to New Zealand businesses.
- Implementation of the processes would entail significant IT infrastructure, ongoing maintenance and examiner training costs.
- Applicants were considered unlikely to use these processes to gain any commercial benefit. In this regard, there appears to be no discussion outlining reasons why an applicant might use the SAP/SEP.
- There would not be any significant benefits in terms of work-sharing because examination reports issued by either Office are already accessible to the other Office online. Thus, implementation of the SAP and SEP would not result in any significant reduction in duplication of examination work. Other cooperative arrangements, such as the Global Patent Prosecution Highway are considered to provide alternative means for achieving the benefits of the SEP as well.
- A proposal is being developed to expand the capability of the ePCT system to allow filing of multiple national phase applications, which essentially achieves similar benefits at a much lower cost to the New Zealand Patent Office.
The impact of this recommendation on the New Zealand Patent Amendment Bill remains to be seen in the Second Reading. However, it is likely that the relevant portions of the Bill will be removed, and the Australian/New Zealand patent application process status quo of separate and independent examination will be maintained.
The Australian Patent Office has advised that all work on development of the SAP and SEP, including a previously planned public consultation that was to have commenced shortly, is now on hold until the outcome of the Bill in New Zealand is known.