Kiwis Unimpressed by Trans-Tasman Profession Proposals

Design by The Angry Kiwi

On 7 April 2011, IP Australia and the New Zealand Ministry of Economic Development released a discussion paper for a trans-Tasman patent attorney regulatory framework.

The key reform proposed in the discussion paper is the establishment of a single trans-Tasman (i.e. across Australia and New Zealand) governance body or board to regulate education, discipline and registration.  The central proposal is that the respective roles and functions of the Australian Professional Standards Board for Patent and Trade Marks Attorneys (PSB), the equivalent body proposed to be established in New Zealand, the Director General of IP Australia, and the New Zealand Commissioner of Patents would be merged into a single new body.

Under this regime there would be:

1. a single definition of the functions and services which can only be performed by a registered patent attorney or legal practitioner;
2. a single patent attorney code of conduct;
3. a single disciplinary regime;
4. a consistent attorney qualification/continuing education requirements;
5. a single registration process and register;
6. a single fees regime; and
7. a single secretariat support unit.

Essentially, in place of the current system, in which Australia and New Zealand have separate regimes for the registration and regulation of patent attorneys (i.e. a practitioner is an Australian Patent Attorney, a New Zealand Patent Attorney or, commonly, both), there would instead be a single ‘Trans-Tasman Patent Attorney’.

The deadline for public comment on the discussion paper was 16 May 2011, and all submissions can now be viewed on IP Australia’s web site.

We think it would be fair to say that the comments from Australian practitioners are generally not unfavourable, while the submissions by New Zealand practitioners are more numerous (despite the smaller size of the New Zealand profession), and almost universally opposed to the proposal.  And, frankly, we find this completely understandable!

EXISTING DIFFERENCES

Currently, there are a number of significant differences between the Australian and New Zealand regimes regulating the patent attorney profession in the two countries.

These include:

1. Australian patent attorneys are required to have a tertiary degree with ‘in-depth’ coverage of a field of patentable subject matter, whereas New Zealand patent attorneys are not;
2. in Australia, there is a separate system of registration for trade marks attorneys, while in New Zealand there is only a register of patent attorneys, who are also qualified to act as trade marks attorneys;
3. New Zealand has no equivalent of Australia’s Professional Standards Board (although, under draft Patent Attorneys legislation it is proposed that such a body be created);
4. in New Zealand, the education, training and examination for qualification as a patent attorney remains in the hands of the profession, while in Australia this role has largely been transferred to the tertiary education sector, where a number of competing qualification options now exist;
5. Australian patent attorneys are now subject to a formal ‘continuing professional education’ (CPE) requirement, whereas New Zealand attorneys are not;
6. prior to registration as a patent attorney in Australia, applicants are required to provide a ‘statement of skill’, showing that they have had sufficient practical experience in prescribed skills, whereas no such requirement exists in New Zealand; and
7. the cost of registration in Australia is higher than in New Zealand, especially for those who wish to register as both patent and trade marks attorneys.

Additionally, there are substantial differences in the patent laws of the two countries which means that, although registered Australian patent attorneys are already permitted to register in New Zealand also, and vice versa, as a practical matter there are very few attorneys with a high-level working knowledge of the laws and practices of both countries.  Although if the New Zealand Patents Bill is ever passed (it currently appears to be stalled before parliament), and if the proposed Australian patent reforms are also passed (see Australian Patent Reform – Wrap-Up), the laws of the two countries will certainly be brought more closely into line.

On the face of it, the above list suggests that standards are currently higher in Australia than in New Zealand.  However, it is not that simple, and certainly is not the way most New Zealand patent attorneys see things!

WHAT IS BEING PROPOSED?

The proposal would unite the trans-Tasman professions under a single regime having systems and standards equivalent in each aspect to the ‘higher’ of the two existing regimes.

What this means in practice is that, for the most part, the trans-Tasman system would operate very much like the existing Australian system.  The changes would therefore have little, or no, impact on Australian practitioners, and yet could have a significant impact upon many in the New Zealand profession.

It is therefore hardly surprising that there were very few submissions made in response to the discussion paper from Australia – and notably none on behalf of any Australian patent attorney firm – while the larger number of submissions on the New Zealand side include seven under the banners of established firms, including AJ Park, Baldwins, Henry Hughes and Pipers which, between them, would appear to represent about 100 professionals practising as New Zealand patent attorneys.

It is also not surprising that the main Australian submissions on behalf of the profession – those of the Institute of Patent and Trade Mark Attorneys Australia (IPTA) and the Federation Internationale des Conseils en Propriete Industrielle (Australia) (FICPI) – are generally ‘not opposed’ to the proposals (these words are used frequently in IPTA’s submissions), while the submissions from the other side of the Tasman (including those of FICPI New Zealand) are almost totally opposed!

THE MAIN ISSUES FOR NEW ZEALAND ATTORNEYS

A number of issues are raised in the various New Zealand submissions, including some recurring themes.  We do not propose to pick out individual contributions (not even those that appear to cast aspersions upon the Australian profession), but rather just briefly summarise the main issues.

Qualification Requirements and Trade Marks Attorneys

The New Zealand profession is rightly concerned about the consequences of introducing a requirement for a tertiary qualification in a field of patentable subject matter upon those New Zealand attorneys who wish to practice only in the area of trade marks.  While existing registered attorneys will be protected by a ‘grandfather clause’, unless a separate system for the registration of trade marks attorneys is introduced it will no longer be possible for someone without a relevant tertiary qualification (e.g. in engineering or science) to register as a patent attorney in order to practice in trade marks.

While some submissions are opposed to the introduction of an additional tertiary qualification requirement (largely on the basis that the existing system seems to work perfectly well), a number of New Zealand practitioners seem perfectly happy with the idea (absent the Australian ‘in-depth’ requirement), so long as there are provisions made for the registration of trade marks attorneys without relevant tertiary qualifications.

Freedom to be a New Zealand Patent Attorney

Although most Australian patent attorneys are also registered in New Zealand, the converse is not true to the same extent.  A significant number of New Zealand practitioners choose not to practice in Australia, and therefore not to pay the higher fees associated with obtaining Australian registration.

Under the proposed regime, everybody would have to be a trans-Tasman attorney, or nothing.

Costs

There appears to be an expectation that the registration fees would be at least as high as the current Australian fees, and thus that the proposed system would result in a significant increase in costs for New Zealand firms.

We feel we must draw attention to the submission from AJ Park, which includes detailed calculation of their anticipated annual increases in registration costs, at pages 3 and 4.

Educational Standards

Under the proposals, responsibility for the education and examination of attorneys would be taken from the exclusive control of the profession, and opened to competition from the tertiary education sector (as it was in Australia over decade ago).

In general we are in favour of this, and we have little time for the views of those conservative members of the profession who oppose such changes on the basis that they will result in a drop in standards.  High failure rates in examinations conducted by the profession, as compared with those conducted by universities, are not indicative of differences in standards.  They are indicative of a complete failure on the part of the profession to run a pedagogically effective and appropriate education and examination regime.

It is inappropriate in a free labour market for any profession to act solely as its own gatekeeper.  Other professions – including doctors, lawyers, engineers, accountants, and so forth – have all learned to accept that there is a distinction between technical education and practical experience, and to deal with this in their employment, qualification and/or registration practices.  Most of the original guilds were on their way out by the end of the 18^th century, and it is astonishing that the patent attorney profession still needs to be dragged kicking and screaming into the 19^th century!

Having said that, some of the submissions raise a legitimate concern, which is the practicality of New Zealand universities developing and running appropriate courses leading to qualification as a trans-Tasman patent attorney.  The reality is that the New Zealand market is small, and the cost may therefore be unjustifiable for local universities.  The courses run by Australian universities would be available, but New Zealand attendees would either be restricted to the online variations, or subject to the additional expense of travelling to Australia.

Some concerns were also raised regarding the fees charged by the universities.  However, we think that if firms do not believe that it is currently costing them a significant amount to train new attorneys, this only shows that they are not properly accounting for the real cost of their in-house training programs.

FURTHER COMMENTS

There are various other concerns, as well as few dissenting views, amongst the various submissions, which you can read for yourself if sufficiently interested, but we think that the main recurring issues are those outlined above.

We note that there was one point on which Australian and New Zealand practitioners are broadly in agreement, which is that employment solely within IP Australia and/or the Intellectual Property Office of New Zealand should not be placed on a equivalent footing with employment by a registered patent attorney as a basis for satisfying the practical experience requirements for registration.

We have great sympathy for the concerns of the New Zealand profession.  We fear, however, that the Single Economic Market (SEM) initiative now has too much momentum – and political traction – for the objections of a few patent attorneys to apply the brakes.  We hope that we are incorrect, because a failure to hear and consider the very real and legitimate issues raised by the major New Zealand stakeholders would be – to put it very bluntly – pig-headed and morally wrong. 

Indeed, we think that the only fair and reasonable thing to do, in view of the clear and valid objections of the New Zealand profession, is simply to drop this proposal from the agenda, at least until some future time when the legal and regulatory regimes in the two countries may be more closely aligned.  The current mutual recognition system already satisfies almost every conceivable requirement for achieving the SEM objectives.  But Australia and New Zealand are nonetheless distinct countries, in which patent attorneys face different issues and challenges.  There is no good reason why it should be beneficial to shoe-horn all members of the profession in both countries into a single, one-size-fits-all system.

A single trans-Tasman regulatory framework?  On behalf of our New Zealand brethren, Patentology says no!

Tags: Australia, New Zealand, Patent attorney profession, Regulations