Single Economic Market ("SEM") reforms between the governments of Australia and New Zealand have now reached a point whereby a single application process ("SAP") and a single examination process ("SEP") for counterpart Australian and New Zealand patent applications may be in place – at least in "pilot" form, by late 2015. Clients filing in both Australia and New Zealand stand to gain significant benefits under any such scheme.
We have reported previously on the impending Single Economic Market ("SEM") reforms, as agreed between the Australian and New Zealand Governments back in 2009. The wider reforms encompass not only intellectual property, but also competition policy, consumer protection, accounting standards, securities offerings, cross-border insolvency and company registrations. The framework aims to accelerate and deepen trans-Tasman regulatory integration and to provide a "seamless" business environment between our two countries. Indeed, we have encouraged our overseas clients to increasingly look upon Australia and New Zealand as a "mini-Europe" – and common currency notwithstanding, this appears to be the end-game of the broader SEM reforms.
In this article, we report on recent progress toward the SEM reforms – specifically, as it pertains to IP.
On 9 February 2015, the Intellectual Property Laws Amendment Bill 2014 was passed by the Australian Senate. The Intellectual Property Laws Amendment Act 2015 ("the Act") subsequently received Royal Assent on 25 February 2015 – and many of its provisions have already entered into Australian law.
The Act actually has five schedules, of which Schedule 4 relates to the SEM initiatives. For reasons that will be explained below, the provisions of Schedule 4 have not yet entered into law; they will take effect from "a single day [within 24 months] to be fixed by Proclamation".
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 and examination process for patents in both jurisdictions (this is not to be confused with a unitary AU/NZ ("ANZAC") patent);
- single trans-Tasman regulatory framework for the patent attorney profession;
- A single trans-Tasman trade mark regime; and
- A single trans-Tasman regime for plant breeders' rights.
However, of these four, only #1 and #2 were carried through into the Act, as passed.
Firstly, the Act codifies 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 would be examined by a single examiner from either IP Australia or the Intellectual Property Office of New Zealand ("IPONZ").
The examiner would be required to take account of the respective national patent laws and would produce two separate examination reports, ultimately resulting in distinct Australian and New Zealand patents. Examiners would undergo the additional training necessary to grant or refuse applications under the respective national laws of each country. Accordingly, it is not necessary for Australian and New Zealand patent laws to be identical – indeed, they differ rather significantly at present. Thus, whilst the end product remains the same, the proposed new processes aim to reduce duplication of work by either patent office – or by a patentee's AU/NZ representative/s.
The primary goals of the single application ("SAP") and examination ("SEP") processes are to reduce duplication and optimise efficiencies. Any such unitary 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 and more synchronised examination process, which may enable a patentee to get their invention to market more quickly; and
- Relatively consistent and high-quality patent examination, which may result in more robust IP rights and may give local patentees greater confidence when seeking IP protection abroad.
The SAP/SEP initiatives would be implemented in two stages. In the first stage, both countries would rely on each other's work to the extent possible, in order to build confidence and simplify internal processes. The second stage would be the SEP, 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. From the Australian end, the implementing regulations are not yet available, although a consultation paper has been released.
However, before Australia's implementing regulations take effect, corresponding legislation must be passed in New Zealand. As explained below, this legislation is expected to be tabled in the New Zealand Parliament later this year.
The second of the four SEM IP targets that was passed in the Act relates to the proposed single trans-Tasman regulatory framework for the patent attorney profession. Progress toward this framework effectively began when New Zealand's Patents Bill 2008 was "divided out" at the Select Committee stage, back in 2010. 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 newly-passed 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 proposed unitary trade mark and PVR regimes? They've not been abandoned by any means. As we understand it, they had simply not progressed to a level befitting inclusion within the Act, as passed. Such regimes remain on the cards, but will not be allowed to slow down the wider reforms.
The new Act can be accessed here; and its Explanatory Memorandum, here. We've also produced a YouTube summary of the SEM reforms, which can be found here.
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.
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.