The patent regimes of Australia and New Zealand have long shared a number of close links, not least among them the Trans-Tasman Mutual Recognition Arrangement of 1996 which ensures that Patent attorneys registered in either country are able to register to practice in the other. However in recent years there has been debate concerning whether IP Australia (the Australian IP Office) and IPONZ (the New Zealand IP Office) should introduce a single shared application and examination process for patents.
This proposal has recently been assessed by the New Zealand Parliament’s Commerce Committee in its July report on the Patents Amendment Bill 2016. IP Australia had suspended its work on the corresponding proposal pending this report.
The proposal
The proposal laid out in the draft Bill was separated into two parts. The Single Application Process (SAP) would have allowed an applicant or their agent seeking to obtain a patent in both Australia and New Zealand to make a single application through a single online portal. The portal would then produce two separate applications and automatically submit them to IP Australia and IPONZ. Notably this was not to result in a single application, but rather a single process for filing an application in both countries simultaneously.
Under the second part, the Single Examination Process (SEP), a single Examiner from one of the two national offices would examine both applications generated under the SAP. This was proposed in order to reduce duplication of work in completing the same task on both sides of the Tasman.
The Committee’s findings
The Commerce Committee was very critical of the process by which the proposed bill and the SEP and SAP proposals had been drafted. The Committee noted:
We consider that there was a lack of consultation with patent attorneys and the rest of the industry before the development and proposal of these enabling provisions. Moreover, we consider that quantification of likely costs…was inadequate.
The reason for this criticism appears to be that the overwhelming majority of submissions received by the Committee during their public consultation were negative and rejected both the usefulness of any of the proposed processes and their cost-effectiveness. Objections raised to the Bill’s proposals centred around three areas:
- Lack of benefits: The Committee found that most stakeholders believed that the SAP would not save them any material time or resource. The time and expertise required to submit the actual application through the current respective online portals of IP Australia and IPONZ is small, while the time and expertise required in the process of drafting the application is considerable. A single portal would save little time in and of itself. Further, the SEP would also produce no real benefit to applicants; the differences in law and practice between Australia and New Zealand still remain significant in many areas, and it would mean that applicants and their agents would still need to consider and respond to two different sets of objections during Examination. The fact that these two sets of differing objections were delivered by the same examiner would be unlikely to save the applicant any meaningful time or costs in responding to them.
- High costs: Introducing the SAP would involve significant new investment on the IT infrastructure required for the online portal and back end systems. The SEP would also require additional IT infrastructure, but more importantly would involve substantial retraining of patent examiners to be proficient in the intricacies of patent law in both countries. These costs appeared likely to be passed onto patent applicants through higher application and examination fees charged by IPONZ. These higher fees would be likely to negate any small benefit to applicants in saved time.
- Duplication of existing and proposed schemes: The public consultation revealed that increased online availability of examination reports produced by IP Australia and IPONZ already reduces duplication of examination work for many trans-tasman applications. The Committee also found that schemes like the Global Patent Prosecution Highway and other developing work-sharing arrangements were already increasing examination efficiency in New Zealand. Perhaps most seriously, the Committee learnt that World Intellectual Property Organisation (WIPO) is in the process of developing its ePCT system further to provide very similar benefits to the proposed SAP for national phase entry of International (PCT) patent applications. A pilot program for this proposed change to the ePCT system is already being developed between WIPO and various IP offices around the world, including IPONZ and IP Australia. This new system would likely quickly render the proposed SAP redundant for the vast majority of applications being filed in both countries.
Conclusion
In summary, the Commerce Committee suggested that SAP would not be used by applicants and would quickly become redundant, while the SEP would potentially be more expensive and difficult to administer without conferring any significant benefit. The Committee recommended dropping the proposals entirely, and with IP Australia also awaiting this outcome it looks likely that the SAP and SEP are now not going to proceed.
We concur with the Committee’s view that the SAP and SEP were unlikely to be of significant benefit to our clients. We will of course continue to draft and prosecute patent applications in both New Zealand and Australia on behalf of our clients using the existing structures.