The New Zealand Government has announced approval of a single trans-Tasman patent application and examination regime. Although still some time away from actual implementation, the proposed co-operative regime sets to benefit those pursuing patent protection in both Australia and New Zealand by reducing time and costs in securing patent rights.

Background

For those having a good memory, plans for a single trans-Tasman patent regime first emerged in a joint statement by the Australian and New Zealand governments in 2009.1 Initial implementation was expected in early 2013 but has been delayed for various reasons including political matters on both sides of the Tasman.

Fast-forward to 2013, the NZ Commerce Minister announced in October approval of this cooperative regime2 following two recent developments - the introduction of the related Intellectual Property Laws Amendment Bill 2013 into the Australian Parliament in May 20133, and the passing of New Zealand’s Patents Bill 2008 in September 2013.4 Both developments were seen as necessary pre-cursors to the single trans-Tasman patent regime. This announcement therefore comes in a timely manner.

The cooperative regime

The cooperative regime aims to streamline and reduce the costs by removing work duplication in the two countries. New Zealand’s former Commerce Minister Simon Power estimated that this initiative once implemented would save patent applicants $2,000 to $5,000 per invention.5

In brief, the regime allows a patent applicant to file a single application with either patent office to effect simultaneous filing in both countries. The simultaneous filings are examined by a single examiner, who will issue examination reports effective for both filings. The patent applicant need only submit a single response to each examination report in reply. Upon successful examination, the patent applicant will be granted a separate patent for each country. 

Due to the differences in patent law and practices between Australia and New Zealand, it could well be the case that a patent is granted in one country but is refused in another. The passing of New Zealand’s Patent Bill 2008 went some way to bring validity requirements in the two countries in closer alignment6 but some differences will always remain. For example, methods of medical treatment are non-patentable in New Zealand but patentable in Australia. Further, patentability exclusions of controversial subject matter, such as computer-implemented inventions, will no doubt continue to evolve over time. As another example, a conflicting local application which exists in one but not the other country will be “whole of contents” prior art in only one country. Quality of the examination therefore hinges largely on the competency of examiners to be well-versed and up-to-update in validity requirements of both countries.

One feature of the cooperative regime is its flexibility. For example, patent applicants can take advantage of the single-step simultaneous filing but still elect to have the applications examined by separate Australian and New Zealand examiners. In fact, this may be a better option during the regime’s first year or so of operation to avoid invalid patents being granted due to examiners of one country still familiarising with validity requirements of the other. Similarly, Australian and New Zealand applications filed separately can still be elected to be examined under the regime by a single examiner. This option appears to provide retrospective operation for corresponding applications that are already pending when the cooperative regime is set to launch.

What is on the horizon?

Implementation of the cooperative regime still requires further work by the respective governments on both sides of the Tasman. On the New Zealand side, the New Zealand Government has timetabled7 draft regulations to be released in mid 2014. First implementation is scheduled go live in early 2015 when simultaneous filing will be accepted. A pilot examination programme is scheduled to launch near the same time to elect a limited number of corresponding applications to be examined by a single examiner, although the full rollout of the single-examiner regime is not expected until 2017.

On the Australian side, passing of the Intellectual Property Laws Amendment Bill 2013, which includes key provisions for enabling the cooperative regime, was stalled by a federal election and a subsequent change of government. The Bill did at one stage quickly proceed to its Third Reading in the lower house, and received its First Reading in the upper house in June 2013 before the election was called. There has yet to be a scheduled date for the reintroduction of the Bill on the horizon since it lapsed.8

The approval of the trans-Tasman patent regime by the New Zealand government is certainly welcoming news to patent applicants. The New Zealand government seems to have now overtaken the Australian counterpart in terms of progress. Be sure to watch this space over the next while for related news from Australian legislators.