27 October 2013

NZ Government ‘Approves’ Single Trans-Tasman Patent Applications

TeamworkAccording to a media release issued on 23 October 2013, the New Zealand Government has approved the implementation of a single application process (SAP) and single examination process (SEP) for New Zealand and Australian patent applications.

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:
  1. IPONZ and IP Australia will finalise the required operational and administrative infrastructure by the end of 2014;
  2. 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;
  3. around 18 months later, i.e. in mid-to-late-2016, a review of SEP pilot program and public consultation will be conducted; and
  4. in 2017 Cabinet approval will be sought to determine whether to fully rollout the SEP.
Of course, a similar legislative and consultation process needs to occur on the Australia side, also. 


The 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.

Image Copyright (c) 123RF Stock Photos


Steph Kennedy, IPTT said...

"The business model of the most aggressive PAEs is fairly straightforward – acquire patents; identify potential target licensees; pursue licenses under the threat of lawsuits; and, if the targets do not sign up, commence proceedings (often in the Eastern District of Texas)."

This is it in a nutshell. Patent law, like any other genre, always includes that secondary "law of unintended side effects". We intend it for good, the evil people use it for evil.

But if we can do simple things like require that all parties of interest be named in a suit, which is one of the provisions in I believe our Goodlatte Bill called the "Innovation Act", then that's a good step. It doesn't hurt the individual inventor or small business, but has the potential to really cramp a troll's style.

Further, I think that using the free market system to out these trolls, triangulate who they are and how they operate, we can get those who are on the receiving end of the demand/threat letters together and have them collectively refuse to deal. Trolls have deep pockets, sure, but deep enough to take every one they send a letter to all the way through a trial? Methinks not.

Just sayin',


Mark Summerfield said...

Hi Steph

Actually, I think there is a problem for individual inventors and small businesses in the 'disclosure of interests' provisions of the Goodlatte Bill.

The proposed legislation does not just require that all interested parties be named, it also provides that they can be joined to the proceedings, and that if an unsuccessful plaintiff is unable to pay costs that the court may award, then any joined parties may be ordered to pay instead. According to the Bill, an 'interested party' includes any party who:

...has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue,

Imagine, then, that an individual inventor has come up with a great idea, but does not have the resources to commercialise it. The inventor might seek to establish a company as a vehicle to raise capital, or to form a partnership with an existing company with the resources to commercialise. Either way, the inventor might well assign the patent rights to the company in some arrangement that involves receiving a share of future income generated by the invention. Indeed, if the inventor does not assign the rights, or at least grant an exclusive licence, the company would have no standing to sue for infringement, and this would be the inventor's responsibility anyway.

In any scenario of this type, if the company ever seeks to enforce the patent against an infringer, the individual inventor would need to be identified as having an interest, may be joined to the proceedings as an individual, and may be personally liable for coverage of any costs awarded against the company, if it is unable to pay.

A similar situation would arise if a small company entered into a corresponding commercialisation arrangement with a partner company.

There are ways around this. For example, the Bill specifies that a party which has an interest only by virtue of holding equity in the plaintiff company is not an 'interested party', so long as they do not have any control or influence over the litigation. The trolls will abuse that loophole, while inventors will be forced to dilute their interest and relinquish control over their inventions in order to avoid personal liability.

I think these provisions will need some refinement if they are going to pass scrutiny.


Steph Kennedy, IPTT said...

Hi Mark,

You make a fair point about the individual inventor being considered a party of interest, but if the patent has been assigned to a third party and he's been paid for his patent, is he really still in danger of being brought back in on a judgment? Whereas a patent holding company who's had the rights assigned and is then going out and suing on behalf of the company who acquired the patent to begin with (think Ericsson/Unwired Planet), that's a different story. Ericsson is using Unwired Planet as a proxy to sue (alleged) infringers. That's not quite the same thing, in my mind anyway.

The real problem I see with this part of the law is the fact that the "real parties of interest" will simply hide their money when the time comes if they lose. Do you know that David Prowse, the guy in the Darth Vader suit, has yet to be paid royalties on his work in Return of the Jedi? Do you know why? Because, on the books, that movie hasn't cleared a profit. Seriously??? That movie has a domestic lifetime gross of $309,306,177, but it hasn't made a profit?

This is exactly the game the trolls will play, and why I think that this provision looks good on paper, but it'll never hold. The only possible way that works is if both sides are made to escrow a certain amount up front in case they're the loser. Not sure that will happen!



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