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Streamlined Process for Trans-Tasman Patents

In a recent announcement1, IP Australia and the Intellectual Property Office of New Zealand (“IPONZ”) have agreed on an implementation plan to introduce a streamlined patent process that will allow a unitary patent application process for both countries by early 2013, and a unitary patent examination process by June 2014. Both sides agree that the streamlined patent process will benefit inventors in Australia and New Zealand through the realisation of:

  • potential savings in patent prosecution costs (namely professional fees) by eliminating duplicate examinations;
  • 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.

In relation to the proposed unitary examination process, “equivalent” Australian and New Zealand patent applications will be examined by a single examiner from either IP Australia or IPONZ. The examiner will be required to take account of the respective national patent laws and will produce two separate examination reports, ultimately resulting in distinct Australian and New Zealand patents. Examiners will need to undergo the additional training necessary to grant or refuse applications under the respective national laws of each country. However, concerns have been raised by IP professionals on both sides of the Tasman in relation to the question of how quickly AU and NZ patent examiners can be brought up to speed on the intricacies of each other’s national patent laws.

Indeed, there are some notable differences in the national patent laws of the two countries. For example, unlike in Australia, inventive step is not currently considered by IPONZ during examination. Furthermore, New Zealand still recognises local novelty as opposed to absolute novelty requirements when assessing prior art information.

It should be noted that proposed changes to New Zealand’s current patent laws are scheduled to be introduced shortly, and, if passed, will have the effect of aligning New Zealand’s patent legislation closer to that of Australia’s. However, some proposed provisions (notably those concerning patentability of software and methods of medical treatment) will depart from the Australian approach and may therefore present a potential source of difficulty during examination.

Accordingly, at this early stage it is not yet clear whether the unitary examination process will benefit applicants, and in what circumstances. Baxter IP has both Australia and New Zealand patent attorneys who can advise clients looking to pursue protection in either jurisdiction.
1http://minister.innovation.gov.au/Carr/MediaReleases/Pages/STREAMLINEDPROCESSFORTRANS-TASMANPATENTS.aspx