Regular readers of this blog will be aware that this has been in the works for quite a while, as part of the ‘Single Economic Market’ (SEM) initiative between Australia and New Zealand.
An announcement from the Australian Government in July 2011 indicated that an SAP would commence in early 2013, with the full SEP implemented by June 2014. Clearly, therefore, the plan is already a long way behind schedule, primarily because the initial work sharing arrangements between IP Australia and the Intellectual Property Office of New Zealand (IPONZ) were originally contingent on passage of the new NZ Patents Act, which was delayed far longer than expected. A work sharing pilot eventually commenced in September 2012, with IP Australia reporting that ‘underlying knowledge and skills used by examiners of both offices are very similar’.
According to a current timetable revealed in NZ Government Cabinet documents, full implementation of the SEP will not occur until at least 2017.
Why Trans-Tasman Applications and Examination?The NZ Government media release states that:
Around 5700 applications filed with IPONZ are also the subject of a corresponding application in Australia and forty per cent of applicants also nominate the same patent attorney for both applications.
Using an online portal hosted on the IPONZ and IP Australia websites, applicants will be able to apply for patent protection simultaneously in Australia and New Zealand, while a single examiner will assess both applications according to the respective laws.
In principle, therefore, there are potential simplifications and cost savings for applicants (and, notably, for IPONZ and IP Australia) in providing a single application and examination procedure.
Ultimately, however, the patents granted in Australia and New Zealand (assuming a patent is indeed granted in both countries) will be separate and independent. Both IPONZ and IP Australia will retain their existing responsibilities for granting or refusing the patents, and post-grant proceedings (including enforcement and/or revocation actions through the courts) will need to be conducted separately in each country.
What Needs to Be Done?In order for the SAP and SEP to become reality, both countries need to amend their legislation to permit documents filed with, or held by, the Patent Office of the other country to be treated as if they had been filed with the local Office. Additionally, legislation is required to ensure that it is clear that the statutory responsibilities of the Commissioner of Patents in each country can legitimately be delegated to personnel in the Patent Office of the other country.
In Australia, the required legislative changes were included in the Intellectual Property Laws Amendment Bill 2013, which was introduced to Parliament on 30 May 2013, but lapsed when an election was called before it had successfully passed through both houses.
Further information about the approval of the SAP and SEP programs can be found on the NZ Government web site, including a copy of a Cabinet paper [PDF 386kB] setting out exactly what has been approved, and the proposed implementation process.
The recommendation from Commerce Minister Craig Foss is that the necessary legislative changes be made via the Patents (Trans-Tasman Patent Attorneys) Amendment Bill (which also implements the New Zealand side of the single trans-Tasman regulatory regime for patent attorneys).
When Will the Changes Occur?A current timetable for implementation is set out in the Cabinet paper (at paragraph 55), according to which:
- IPONZ and IP Australia will finalise the required operational and administrative infrastructure by the end of 2014;
- the SAP will go live in early 2015, i.e. around six months after the Patents Act 2013 enters into force, at which time an SEP pilot program will also commence;
- around 18 months later, i.e. in mid-to-late-2016, a review of SEP pilot program and public consultation will be conducted; and
- in 2017 Cabinet approval will be sought to determine whether to fully rollout the SEP.
ConclusionThe announcement from the NZ Government seems very certain, although I have personally wondered whether the new Australian government will have the same enthusiasm as its predecessor for all of the proposed SEM reforms. It currently appears to have more pressing concerns (such as fighting bushfires raging freakishly early in the season, pushing through regulatory changes to limit the availability of bushfire relief payments, and convincing the world that there is no connection between the increasing incidence of extreme weather events, fires, and anthropogenic climate change based on such unimpeachable sources of evidence as Wikipedia).
However the NZ Cabinet paper states (at paragraph 14) that ‘[i]mplementation of the SAP and SEP is not expected to be affected by the change of government in Australia.’ I suppose we shall see whether this proves to be an accurate prediction.
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