A Brave New Trans-Tasman World? Not quite yet, but progress at least

Trans-Tasman
Dr. Phillip Burns
  • Dr. Phillip Burns - Former Senior Associate, Electrical Engineering Patent Attorney
  • Former Senior Associate, Electrical Engineering Patent Attorney

Recent developments in Australian Patent Laws this week have moved out Patent System closer to a harmonisation (of sorts) with that of New Zealand with the passing in the Australian Senate of the Intellectual Property Laws Amendment Act 2015 (previously known as the Intellectual Property Laws Amendment Bill 2014). The goal of this new Act is, among other things, to set up the legislative framework for collaborations between the Australian Patent Office (IP Australia) and the New Zealand Patent Office (IPONZ) during the prosecution/examination phase of patent applications in either country. As noted by the Australian Parliamentary Secretary to the Minister for Industry and Science, The Hon. Karen Andrews MP: “This new legislation will streamline business between Australia and New Zealand by simplifying the process for innovators seeking to patent the same invention in both countries” and will allow for a single Trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda. Under this SEM agenda, the New Zealand and Australian Governments are working on efforts to remove regulatory barriers to firms operating in both markets. The aim is to create a more seamless Trans-Tasman business environment with a defined set of outlines articulated on the Trans-Tasman Outcomes Implementation Group website. The creation of the single Trans-Tasman regime is intended to make it easier and more cost effective for patent applicants to obtain patent rights in both countries by, primarily, moving work duplication by the Patent Offices and patent Examiners in the two countries.

This new Act also implements changes to simplify certain aspects of Australia’s intellectual property system and purportedly will make it cheaper and easier to protect and enforce certain IP rights. For example, the new Act:

  • Makes minor administrative changes to the Australian Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983.
  • Makes technical changes to the Patents Act to correct minor typographical and clarity oversights (to prevent confusion in the wording of the Act inconsistent with the intent of the initial Raising the Bar amendments) in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.
  • Extends the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder’s rights matters – thereby making it simpler, quicker and more cost effective method for owners of plant breeder’s rights to enforce those rights by giving them the option of taking action in the Federal Circuit Court against alleged infringers.
  • Implements the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court – thus allowing generic drug manufacturers in Australia to apply to the Federal court for a compulsory licence from the patent owner to make and export the patented medicines to disadvantaged countries, whilst still ensuring that the patent owner is adequately compensated for such a license.

In short, the amendments to Australia’s intellectual property laws are intended to reduce regulatory and administrative costs and delays for Australian businesses related to intellectual property issues, the most significant of these being the implementation of amendments to allow the single Trans-Tasman regime for streamlining patent attorney registration and obtaining patent rights in Australia and New Zealand. It is understood, however, that to complete this Trans-Tasman cooperation, similar amendments are also required in the intellectual property laws of New Zealand, with a new Bill expected to be presented into New Zealand parliament in 2015. Then, following passage of the New Zealand Bill, amendments will further be required to the Australian patent regulations and to the New Zealand patent regulations to implement the SEM initiatives.

Given that New Zealand have only just recently implemented a new Patents Act after more than a decade of negotiations, this author does not expect the required legislative changes in the New Zealand laws to implement the SEM regime to occur quickly.

More information on the Intellectual Property Laws Amendment Act 2015 can be found at IP Australia.

If you would like to discuss with an attorney how a single Trans-Tasman regime, when it eventuates, will affect your intellectual property rights and procedures for obtaining patent rights in Australia and New Zealand, please contact one of our attorneys.