Australia: Australia-New Zealand SAP and SEP patent reforms facing the chop – opportunity lost?

Last Updated: 1 August 2016
Article by Gareth Dixon

On 13 July 2016, the Commerce Select Committee recommended to the New Zealand Parliament that it should pull the pin on the mooted Single Application Process ("SAP") and Single Examination Process ("SEP") schemes. Such schemes, if established, stood to streamline application and examination processes for patent applicants in Australia and New Zealand.

As Select Committee recommendations are followed more often than not, this move very possibly sounds the death knell of the SAP and SEP. In this article, we briefly consider some of the reasons behind the recommendation – and pose the question as to whether the recommendation, if followed, amounts to a sensible decision or to an opportunity lost.

Introduction

We have reported previously ( here and here) on the Single Economic Market ("SEM") reforms, as agreed between the Australian and New Zealand Governments back in August 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" trans-Tasman business environment.

In respect of patent law, the Australian and New Zealand Governments had flagged two principal "IP targets" in relation to the SEM:

  1. Unitary application and examination processes for patents in both jurisdictions (not to be confused with a unitary AU/NZ ("ANZAC") patent); and
  2. A single trans-Tasman regulatory framework for the patent attorney profession.

The second proposal (a single trans-Tasman regulatory framework for the patent attorney profession) appears to have been supported by the Select Committee. In conjunction with the position already adopted in Australia (discussed below), the establishment of such a framework should now proceed over the medium term.

SEM reforms in the patent-space

Throughout the patent-space, the SEM reforms between Australia and New Zealand have proceeded somewhat spasmodically since they were first flagged in 2009. The proposed unitary Single Application Process ("SAP") and Single Examination Process ("SEP") schemes were slated as a world first – essentially combining the application and examination processes of Australia and New Zealand into our own "mini-European" system (several key differences notwithstanding).

However, despite several false dawns, the legislation required on both sides of the Tasman has struggled to get off the ground. Bottlenecks have occurred on both sides of the Tasman, with the Australian legislation only having recently passed into law – and the counterpart New Zealand legislation now in its final stages of review by the Commerce Select Committee.

On 13 July 2016, the Commerce Select Committee recommended to the New Zealand Parliament that it should abandon the SAP/SEP schemes. As Select Committee recommendations are adhered to more often than not, this move very possibly sounds the death knell of the SAP/SEP reforms.

The SAP/SEP

The SEP was to be a unitary patent examination process before the national patent offices of Australia and New Zealand. This was slated to be the first step on the road to a single trans-Tasman patent application process. Under this proposal, counterpart Australian and New Zealand patent applications were to be examined by a single examiner from either IP Australia or the Intellectual Property Office of New Zealand (IPONZ).

The examiner would then have been required to take account of the respective national patent laws and produce two separate examination reports, ultimately resulting in distinct Australian and New Zealand patents.

Examiners would have been required to undergo the additional training necessary to grant or refuse applications under the respective national laws of each country. Accordingly, it would not have been necessary for Australian and New Zealand patent laws to be identical; indeed, they differ significantly at present and it was never proposed that the patent laws of the two countries would be merged, as such. Thus, whilst the end product remained the same (distinct AU and NZ patents), the proposed SEP process aimed to reduce duplication of work between the two patent offices.

Any such SEP, in theory, stood to give rise to 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 have enabled a patentee to get their invention to market more quickly; and
  • Relatively consistent and high-quality patent examination, which would have invariably resulted in more robust IP rights and may have given local patentees greater confidence when seeking IP protection abroad.

This initiative was to be implemented in two stages. In the first stage, both countries were to rely on each other's work to the extent possible, in order to build confidence and simplify processes. The second stage was to be the SEP itself, whereby the efficiencies and benefits of the initiative were to have been realised.

In respect of the SAP, this was to be an interface by which a single agent could select one, or indeed both, of Australia and New Zealand as a destination for a patent application. As such, the SAP was to be largely an administrative step, carrying with it the notion that streamlining an agent's administrative burden may result in downstream savings being passed on to the applicant.

Strengths and weaknesses of the SAP/SEP

The Commerce Select Committee received several public submissions on the SAP/SEP proposals. On the whole, the abiding feeling as expressed by stakeholders was somewhat negative. The words "undesirable" and "unnecessary" featured prominently.

Exemplary weaknesses of the proposals included:

  • Minimal cost savings as a result of the SEP (and nothing of substance from the SAP) such that patent applicants, upon receiving two different examination reports, would still need to file two responses, obtain two allowances, pay two sets of fees, etc.
  • Developing and maintaining the IT infrastructure necessary to support the SAP/SEP would give rise to significant capital expenditure.
  • Training examiners to be fluent in both Australian and New Zealand patent laws would result in considerable expense and out-of-office time for those undertaking (and conducting) such training.
  • There is already significant work-sharing occurring in the patent-space by way of public access to foreign search and examination results, patent prosecution highways, and the like.

As such, the general thrust of the public submissions was that in respect of effort/expense versus benefit, the SAP/SEP processes were unlikely to justify the burden of bringing them into practice.

In respect of the apparent strengths of the SAP/SEP proposals, they did stand to be a rather useful discussion point, or marketing tool, by way of establishing foreign interest in the patent systems of Australia and New Zealand. As a world-first, as a "mini-Europe" of sorts, anything that may have stimulated interest in our corner of the world stood to be keenly anticipated.

That said, because the pilot scheme has never eventuated – and because practical experience in using the SAP/SEP processes has not been gleaned, a definitive assessment of the advantages and disadvantages of the SAP/SEP is, at best, theoretical. The Commerce Select Committee has, in effect, decided not to bother. The Committee has made its recommendations based upon the public submissions, which of itself can be a somewhat one-sided proposition – the nature of public submissions is that they are more often than not negative.

What is happening in Australia? (and does it now matter?)

Critically, in order for these reforms to progress, corresponding legislation needs to be passed on both sides of the Tasman. From Australia's end, the Intellectual Property Laws Amendment Bill 2013, which included the relevant SAP/SEP and patent attorney regulation provisions, was introduced into the Australian Federal Parliament on 30 May 2013. Following the Federal election, the Intellectual Property Laws Amendment Bill 2014 was then reintroduced on 19 March 2014 and eventually passed into law on 25 February 2016.

Assuming the New Zealand Government now accepts the Select Committee's recommendation, the SAP/SEP provisions of the recent Australian legislation now stand to go unrealised.

IP Australia released a statement on 15 July 2016 stating that it was "now awaiting a decision on the recommendation from the New Zealand Government".

A sensible recommendation, or an opportunity lost?

This is a question that is difficult to answer given that the SAP/SEP pilot program never got off the ground – and that as a consequence, practical experience in using the SAP/SEP system was unable to be gleaned. In an ideal world, an informed assessment follows practical experience.

However, on balance, the Select Committee's position is probably understandable. All they had to go on was the weight of public submissions received – and as mentioned earlier, the public is generally more inclined to file a submission objecting to something than they are supporting it. Accordingly, in the absence of overwhelming evidence that the SAP/SEP would be a considerable advantage to New Zealand (in its position as "little brother" in these reforms), the Select Committee's recommendation is probably understandable.

Where to from here?

Of course, the Commerce Select Committee does not make the final decision; the New Zealand Government does. That said, it would be somewhat surprising were the Government to go against the Committee's recommendation – especially given its close adherence to the considerably more controversial recommendations made during passage of the recent Patents Act 2013 in relation to the patentability of computer software. Indeed, it is very possibly the software experience (the Select Committee effectively reversed its position on software patents following a glut of public submissions and extensive lobbying) that served as motivation for the anti-SAP/SEP submitters this time around.

We are presently awaiting the Government's response to the Select Committee's recommendation.

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

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