The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 (“the Bill”) passed its first reading in the New Zealand Parliament on 9 February 2016 and has now been referred to the Commerce Select Committee for review and submissions.
The Bill’s main aims are to:
- amend the grounds on which a person can oppose the grant of a patent under the New Zealand Patents Act 2013;
- enable a single patent application process and single patent examination process with Australia; and
- introduce a joint registration regime with Australia for patent attorneys.
Amendment to grounds of opposition
Following the commencement of the Patents Act 2013 on 13 September 2014, an issue has been identified with the grounds on which third parties can oppose the grant of a patent on an accepted patent application. As enacted, the Patents Act 2013 allows for the grant of a patent to be opposed on the ground that an accepted patent application “lacks unity of invention”, i.e. claims protection for more than one invention (see Sections 92(1)(c) and 39(2)(a)). Importantly, this issue was not a ground of opposition under the Patents Act 1953, which was replaced by the Patents Act 2013, and there was no policy intention to introduce lack of unity of invention as a ground of opposition in the Patents Act 2013. It has been recognised that, if this ground remains, patent applicants may be unfairly disadvantaged as the only way to deal with an opposition on this ground would be to amend the application to a single invention. Consequently, the applicant would lose patent rights to the other invention(s) as the deadline for filing one or more divisional applications (in which to pursue additional invention(s)) would have passed.
Furthermore, Section 104 of the Patents Act 2013 states that a patent can only be granted for one invention only but that if a granted patent is found to claim rights in more than one invention, the validity of the patent cannot be challenged on this ground (similar to Section 29(4) of the Patents Act 1953).
Thus, to address this issue, the bill proposes to amend Section 92(1) to explicitly exclude lack of unity of invention as a ground of opposition.
Single application process (SAP) and Single examination process (SEP)
The Bill also introduces a new section into the Act which enables single patent application and examination processes to be implemented between IP Australia and the Intellectual Property Office of New Zealand (IPONZ). Under the proposed regime, an applicant will make a single application with Australia and/or New Zealand nominated. If both countries are selected, a single examiner will consider the case and issue two separate examination reports according to the laws of each country. Following allowance, separate patents will issue in each country and be administered accordingly.
The main objectives of the SAP and SEP are to:
- reduce the time and resources spent by businesses applying for and obtaining patents in both New Zealand and Australia;
- minimise the administrative costs of running the patent regime;
- ensure that patents granted in Australia and New Zealand are of a similar, high-quality standard; and
- ensure that examination approaches are consistent between Australia and New Zealand.
The current proposal is that a pilot program exploring the possible approaches to the SEP will commence later this year.
Single joint registration regime
Finally, the Bill creates a joint registration and regulation regime for patent attorneys in New Zealand and Australia. Although many Australian and New Zealand patent attorneys are already registered to practice in both countries, the Bill proposes to abolish the New Zealand registration regime and extend the existing Australian registration regime to also cover New Zealand resident patent attorneys (i.e. bring New Zealand practitioners under the current Australian regime, mirroring the Australian attorney’s registration, training and disciplinary structures). A single trans-Tasman regime will apply to patent attorneys in both countries.
The Commerce Select Committee has called for submissions by 24 March 2016 and will report back to the New Zealand Parliament by 9 August 2016.