The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill received royal assent on 21 November 2016 and will be in force in its entirety as an Act of Parliament by the end of February 2017.

There are two main amendments to the Patents Act 2013 as a result of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act (the Act) [1] 2016. These are the removal of lack of unity as a ground of opposition in New Zealand and the establishment of a joint trans-Tasman patent attorney registration regime between New Zealand and Australia.

Earlier provisions to allow for the introduction of a single patent application process (SAP) and single examination process (SEP) across Australia and New Zealand were removed from the Act following recommendations from New Zealand’s Commerce Select Committee.

Removal of lack of unity as a ground for opposing grant of a patent

The Act amends section 92 of the Patents Act removing 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. This amendment is currently in place and applies retrospectively to 13 September 2014. The inclusion of this ground in the Patents Act 2013 (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 Select Committee reported the changes to section 92 would better align the 2013 Patents Act with the original policy intent of the 1953 Patents Act.

Single patent application process (SAP) and single examination process (SEP) abandoned

Originally, the Act had intended to introduce a single patent application process (SAP) and single examination process (SEP) across Australia and New Zealand. However, following a number of public submissions opposed to the process, New Zealand’s Commerce Select Committee agreed not to support the single patent processes. The findings of the Commerce Select Committee’s review released in July 2016 concluded that SAP and SEP would deliver minimal cost and time savings and were unlikely to provide significant benefits to New Zealand businesses or patent attorney firms making applications on their behalf. As a result the clause relating to SAP and SEP was removed from the Act. 

Establishment of trans-Tasman Patent Attorney registration regime

Finally, the Act amends the Patents Act 2013 to introduce a joint trans-Tasman registration and regulation regime with Australia for the patent attorney profession. The new regime regulates the provision of patent attorney services and ensures New Zealand patent attorneys are registered and compliant with the joint registration and regulation regime across both countries.

Current New Zealand registered patent attorneys will automatically become trans-Tasman registered patent attorneys under the Act. Going forward, a Professional Standards Board (PSB) accredited provider will administer the trans-Tasman patent attorney qualification for individuals seeking to register as trans-Tasman patent attorneys. There are also transitional provisions in place for the new registration regime. These provisions have been the subject of debate in New Zealand and Baldwins will keep you updated on changes, if any, that may be proposed.

This article was written with assistance from Vicky Mullins.