We have reported previously on the impending Single Economic Market ("SEM") reforms, as agreed between the Australian and New Zealand Governments in August 2009. The wider reforms encompass not only IP, but also competition policy, consumer protection, accounting standards, securities offerings, cross-border insolvency and company registrations. The framework thereby aims to accelerate and deepen trans-Tasman regulatory integration and to provide a "seamless" trans-Tasman business environment.
In this article, we report on progress toward the SEM reforms – as it pertains to IP.
On 30 May 2013, the Intellectual Property Laws Amendment Bill 2013 ("the Bill") was introduced into the Australian Federal Parliament. This comes hot on the heels of (and is not to be confused with) the "Raising the Bar" Act, which came into effect on 15 April 2013. Although the Bill does propose some relatively minor corrections to the new Act, these two pieces of legislation are otherwise fairly distinct in their scope and effect.
The Bill actually has six schedules, of which Schedule 5 relates to the SEM initiatives. In our previous article, we noted that the Australian and New Zealand Governments had flagged four principal "IP targets" in relation to the SEM:
- A unitary application process for patents in both jurisdictions (not to be confused with a unitary AU/NZ ("ANZAC") patent);
- A single trans-Tasman regulatory framework for the patent attorney profession;
- A single trade mark regime; and
- A single trans-Tasman regime for plant breeders' rights.
However, of these four, only two appear to have been carried through into the Bill, as tabled.
Firstly, the Bill seeks to codify a unitary patent examination process before the national patent offices of Australia and New Zealand. This is the first step on the road to a single trans-Tasman patent application process. Under this proposal, "counterpart" Australian and New Zealand patent applications will be examined by a single examiner from either IP Australia 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 office.
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 costs;
- 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 abroad.
This initiative is to 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.
Importantly, in order for these reforms to progress, corresponding legislation needs to be passed in New Zealand. Readers who have been following the progress of New Zealand's new patents legislation will know not to hold their breath on this one!
The second of the four SEM IP targets that made it into the Bill relates to the proposed 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. However, the resultant Patent Attorneys Bill 2010 then mysteriously disappeared from the Parliamentary Agenda.
That said, it is now likely to re-emerge, amended, of course, for conformity with the draft Australian provisions, which purport to establish a single trans-Tasman register of patent attorneys; common requirements for registration; a trans-Tasman patent attorney code of conduct; a common disciplinary process; and a common regulatory body. The rationale for these proposals is that most Australian patent attorneys are dual-registered in New Zealand – and vice versa. So why have two regimes for what is, in effect, a common body of patent attorneys?
And so what of the unitary trade mark and PBR regimes? They're not "dead ducks" by any means. As we understand things, they had simply not progressed to a level befitting inclusion within the Bill. Such regimes remain "on the cards", but will not be allowed to slow down the wider reforms.
Shelston IP will continue to monitor progress regarding the Australasian SEM – and will keep clients promptly informed of progress as it relates to their patents rights within our two jurisdictions.
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