Australia: Australia-New Zealand SAP and SEP patent reforms now officially culled

Last Updated: 23 October 2016
Article by Gareth Dixon

In our article of 29 July 2016, we suggested that the proposed Australia-New Zealand Single Application Process ("SAP") and Single Examination Process ("SEP") schemes were unlikely to proceed, given a report tabled by the Commerce Select Committee of the New Zealand Parliament.

The New Zealand Government has now, unsurprisingly, followed the Select Committee's recommendation and the SAP/SEP processes – a potential world-first – have now been officially curtailed. The Patents (Trans-Tasman IP Attorneys and Other Matters) Bill, currently before the New Zealand Parliament, was amended on 13 October 2016 to remove the SAP and SEP outcomes.

In this article, we briefly consider some of the reasons behind the decision.


We have reported previously ( here, 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, and was approved during the most recent stage of Parliamentary review (reading before the Committee of the whole House). 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 occurred on both sides of the Tasman, with the Australian legislation only having recently passed into law – and the counterpart New Zealand legislation approaching 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. Select Committee recommendations are adhered to more often than not – and as it turns out, this move effectively sounded the death knell of the SAP/SEP reforms.


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.

Relative 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 needed 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.

Given that the New Zealand Government appears to have accepted the Select Committee's recommendation, the SAP/SEP provisions of the recent Australian legislation cannot now be ratified. On 14 October 2016, IP Australia released a statement expressing resignation that these reforms will now go unrealised:

"IP Australia undertook these initiatives based on early indications of real benefits for applicants and our offices. These benefits included reduced costs and prosecution time for patent applications. We understand that in making its decision, the Committee considered the financial and resourcing impacts that SAP and SEP would have on the New Zealand Government. IP Australia respects the New Zealand Government's decision, and as a result IP Australia has ceased work on the SAP and SEP initiatives."

Is the glass half full, or half empty?

The decision made by the New Zealand Government necessarily renders this section somewhat academic – enabling legislation was not passed on both sides of the Tasman and as such, the reforms cannot no proceed further.

Notwithstanding, it is interesting to consider some of the reasoning advanced from the New Zealand side when it came to rejecting the reforms. Most of it related to the economics of having to implement new IT platforms, retrain Examiners, etc. The rationale appeared to be that the sample size of applications that may in time proceed via the SAP/SEP did not justify the expense.

On the other hand, from the time these initiatives were first flagged in 2009, my personal opinion had been that these platforms could be a genuine driver to increase the size of the pool – a tool to encourage foreign patent applicants to file in AU/NZ. For this reason, I am disappointed that the SAP/SEP reforms will no longer progress. However, I can understand the justification advanced from the New Zealand side in declining to pass the relevant legislation.

Where to from here?

The unitary trans-Tasman regulatory framework for the patent attorney profession will expectably now proceed; the SAP/SEP processes will not.

Opportunity lost, or sensible decision? Chances are we will never know.

Shelston IP will continue to monitor progress regarding Australasian patent reforms – 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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions