Aligning the IP systems of Australia and New Zealand

For many years there has been a high level of cooperation between the Australian and New Zealand governments, underpinned by close cultural, social and economic ties and an array of formal and informal arrangements, agreements and treaties between the two countries.

In February 2011, in the course of bilateral talks on a number of subjects, Australian Prime Minister Julia Gillard and New Zealand Prime Minister John Key committed to establishing a joint patent examination system between the two countries. This initiative is part of the Single Economic Market (SEM) outcome framework between Australia and New Zealand, which aims to create a seamless trans-Tasman business environment. One component of the framework is the integration of the IP systems of the two countries, in order to provide: 

• A single regulatory framework for patent attorneys.
• A single examination process for patents filed in both jurisdictions.
• One application process for patents in both jurisdictions.
• A single trademark regime.
• A single plant variety right regime.

Integration of patent examination
According to the statement issued by IP Australia and the New Zealand Intellectual Property Office, the integrated patent system will work by two separate patent applications filed in both Australia and New Zealand for the same invention being examined under the laws of the relevant country by one examiner located in either country.

Australia and New Zealand will therefore operate as one integrated patent examination entity in practice – not in law. Examiners will grant or refuse applications under each country’s law. Both countries will retain flexibility to implement legislation and policies.

The discussion paper considers the intended benefits for innovators of a single examiner examining two patent applications to be potential savings in professional fees and patent protection costs, a faster examination process which may assist in getting the invention to market more quickly, and consistent and high-quality patent examination.

The success of the system will undoubtedly depend on examiners understanding and applying the laws of both countries, and they will therefore need to be trained in the laws of the other country.

Differences between the Australian Patents Act 1990 and the New Zealand Patents Bill 2008 include:

• The law concerning inventive step.
• Statutory exclusions from patent protection in New Zealand (and not Australia) which include methods for the medical treatment of humans by surgery or therapy and methods of diagnosis practised on humans. The Commerce Select Committee’s amendment proposed to the New Zealand bill to exclude computer programs from patent protection in New Zealand.

It is unfortunate that this form of integration of the IP systems of the two countries does not promote harmonisation of the IP laws of both countries.

IP Australia predicts that it will be three years before a single patent examination process between the two countries is implemented.

A single regulatory framework for patent attorneys
In April 2011 IP Australia and the New Zealand Ministry of Economic Development jointly prepared a discussion paper on a single trans-Tasman patent attorney regulation. This is a further component of the SEM outcome framework between Australia and New Zealand.

Although the trans-Tasman Mutual Recognition Arrangement that has been in effect since 1998 allows reciprocal registration in each country, a number of administrative inefficiencies and inconsistencies (eg, duplication of fees and documentation) remain.

The discussion paper highlights that the current regulatory framework that operates in Australia and the proposed framework that would be established under the New Zealand bill are broadly similar, with general alignment having regard to the standard of practising patent attorneys.

The key reform proposed is the establishment of a single trans-Tasman government board or body responsible for education, discipline and registration. The discussion paper proposes that underpinning this arrangement would be: 

• A single definition of the functions and service which can be performed only by a registered attorney or legal practitioner.
• A single patent attorney code of conduct.
• A single disciplinary regime.
• Consistent attorney qualification/continuing education requirements.
• A single registration process and register.
• A single fees regime.
• A single secretariat support unit.

The discussion paper appears to have been well received by the Australian profession, provided that the professional qualifications and training requirements currently required to be met by Australian patent attorneys registered in Australia are not weakened in any new provisions.