A unitary patent examination process is soon to be established
for applications before the Patent Offices of Australia and New
Zealand. Whilst this is believed to be a "world first",
we note at the outset that any such process is at least three years
This development is part of the Single Economic Market
("SEM") reforms, as agreed between the Australian and New
Zealand Governments in August 2009. These reforms encompass not
only intellectual property, but also competition policy, consumer
protection, accounting standards, securities offerings,
cross-border insolvency and company registrations. The proposed
legislative framework thereby aims to accelerate and deepen
trans-Tasman regulatory integration. The stated aims of SEM as they
pertain to intellectual property are:
A unitary application process for patents in both jurisdictions
– the first step (examination) being the subject of the
A single trans-Tasman regulatory framework for the patent
attorney profession. Progress toward such a framework effectively
began when New Zealand's Patents Bill 2008 was
"divided out" at the Select Committee stage; the
resultant Patent Attorneys Bill 2010 is presently
scheduled for its second Parliamentary Reading – and is
expected to be passed later this year;
A single trade mark regime, an announcement being expected
within the next few months; and
A single trans-Tasman regime for plant breeders'
As mentioned above, the proposed unitary examination process is
the first step on the road to a single trans-Tasman patent
application process. Under this proposal, "equivalent"
Australian and New Zealand patent applications will be examined by
a single examiner from either IPAustralia or the Intellectual
Property Office of New Zealand ("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 undergo the additional training
necessary to grant or refuse applications under the respective
national laws of each country. Accordingly, it will not be
necessary for Australian and New Zealand patent laws to be
identical; indeed, they differ significantly at present. Thus,
whilst the end product remains the same, the proposed new process
aims to reduce any present duplication of work by either patent
Any such unitary examination process carries several potential
benefits to patent applicants in Australasia – both
foreign and local:
Potential savings in professional fees and patent protection
A quicker examination process, which may enable a patentee to
get their invention to market more quickly; and
Consistent and high-quality patent examination, which
invariably results in more robust IP rights and may give local
patentees greater confidence when seeking IP protection
This initiative will be implemented in two stages. In the first
stage, both countries will rely on each other's work to the
extent possible, in order to build confidence and simplify
processes. The second stage will be the single examination process,
where the efficiencies and benefits of this initiative should be
realised. Of course, how any such initiative is implemented in
practice remains to be seen.
Shelston IP will continue to monitor progress regarding the
Australasian SEM – and will keep clients promptly
informed of progress as it relates to their intellectual property
rights within our two jurisdictions.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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