The New Zealand Government has finally approved a proposal to implement a streamlined patent application process between Australia and New Zealand. This development comes hot on the heels of the announcement on 13 September 2013 that the long-awaited New Zealand Patents Bill (2008) (the “Patents Bill”) has finally been given Royal Assent. The new Act was designed to reform and update New Zealand’s patent legislation to bring it more into line with that of its major trading partners (including Australia).
Alongside this, the newly streamlined patent process will introduce a single application process, and, eventually, a single examination process for New Zealand and Australian patent applications.
Single Application Process
Under the single application process (“SAP”), applicants will be able to apply for patent protection simultaneously in Australia and New Zealand via online portals hosted on the websites of the respective Patent Offices of Australia (IP Australia) and New Zealand (the Intellectual Property Office of New Zealand – “IPONZ”). We note however that it will also still be possible to file applications separately in each country as presently occurs.
Single Examination Process
Under the single examination process (“SEP”), a single examiner from either IP Australia or IPONZ will examine both applications according to the respective laws of each country, and two separate and independent patents will ultimately be granted, providing the necessary conditions for patentability in each country are met.
Both IP Australia and IPONZ are espousing the streamlined patent process promising it will benefit inventors in Australia and New Zealand through the realization of:
- potential savings in patent prosecution costs (namely professional fees) by eliminating duplicate examinations and reducing administrative costs through the sharing of resources;
- a faster and potentially more streamlined examination process for AU and NZ patent applications, which may enable a patentee to get their invention to market more quickly; and
- a consistent and high-quality patent examination, which will result in more robust IP rights and may give local patentees greater confidence when seeking IP protection overseas.
Enactment of the Patents Bill is expected to take place on 13 September 2014, with SAP being implemented around 6 months later, and SEP shortly thereafter, albeit in a pilot program format for 18-24 months. If the pilot program is deemed successful then full trans-Tasman examination integration may occur in 2017.
While the first stage of the streamlined patent process looks set to be implemented by early 2015, there are still some issues of the process that are causing concern among IP practitioners on both sides of the Tasman. Of most concern is the implementation of the SEP stage and the question of how quickly AU and NZ patent examiners can be brought up to speed on the intricacies of each other’s patent laws. This question is even more of concern when one considers that NZ patent examiners will have relatively little time to get to grips with their own new patent legislation once the Patents Bill has been enacted before the SEP pilot program is initiated.
In this respect, we strongly recommend that Applicants looking to obtain patent protection in Australia and New Zealand first seek advice from a dual registered patent attorney to ensure that a suitable strategy can be put in place to achieve the best possible commercial outcome in each country.