05 July 2011

Trans-Tasman Patents Implementation Plan Announced

We have reported previously on the ongoing Trans Tasman Single Economic Market (SEM) program between the governments of Australia and New Zealand (see Australia and New Zealand – Two Laws, One Patent Examination?)

The program includes a project to reduce the duplication of work in the Australian and New Zealand patent offices in the case of patent applications filed in both countries.  Under the so-called ‘Integrated Patent Examination’ process, applications filed in both countries would be reviewed by a single examiner from either IP Australia or the New Zealand Intellectual Property Office (IPONZ).

In an announcement today by Australia’s Innovation Minister, Senator Kim Carr, and the New Zealand Commerce Minister, Simon Power, it has been revealed that the implementation plan will deliver a single application process for both countries by early 2013, and a single patent examination by June 2014.

An initial stage of the project will involve ‘work-sharing’ between Australian and New Zealand examiners, meaning that each office will have the benefit of access to search and examination materials produced by the other.  However, IP Australia reports that actual work sharing will not occur until the passing of New Zealand's new patents legislation, which they claim is ‘expected in early 2012’ (although this remains to be seen).

Further details are yet to be worked out.  As we have noted previously, potential areas of conflict include:
  1. synchronising examination in the two countries;
  2. training of examiners in the relevant laws of two countries (which will be easier, but still necessary, once the New Zealand legislation passes);
  3. differences in patentable subject matter, particularly if the proposed New Zealand exclusion for computer programs remains in the new legislation (see Stakeholders Say ‘No’ to NZ Computer Program Exclusion)
According to the Minister's press release:

Inventors in Australia and New Zealand can look forward to a faster, cheaper and more streamlined trans-Tasman patent process, as announced today by Australia’s Innovation Minister, Senator Kim Carr, and the New Zealand Commerce Minister, Simon Power.

...

“To succeed in the tough global marketplace, both Australia and New Zealand will need successful innovators, and lots of them. It is the Government’s role to encourage innovation, not hinder it with unnecessary administration processes,” Senator Carr said.

“By moving to align the application processes we will remove duplication and reduce costs. We believe the single pathway to patent protection across Australia and New Zealand will in turn encourage inventors and businesses.”

The savings in professional costs alone could be as high as $2,000 to $5,000 per invention — money that should and will stay in the pocket of the innovator.

New Zealand Commerce Minister Simon Power agreed.

“By removing potential barriers we’re trying to create a seamless trans-Tasman business environment and making it easier to conduct business in both countries,” he said.

“This level of patent cooperation is a world first and will give Australian and New Zealand innovators greater confidence when seeking IP protection overseas.”

We most say that we are sceptical about the purported cost savings.  We have rarely seen a case in which significantly different outcomes are sought or achieved from examination in the two countries, so it is already common that once an application is accepted in once country the professional costs incurred in securing acceptance in the other are much lower.

We are also surprised that Mr Power considers this level of cooperation to be a world first.  We would have thought, for example, that the European Patent Office represents a level of cooperation in a single examination and grant process that far exceeds this modest proposal.

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