Moving Closer to a Single Trans-Tasman Patent Application

New Zealand Commerce Minister Craig Foss announced on 23 October 2013 that the New Zealand Government had approved the implementation of a single application process and single examination process for New Zealand and Australian patent applications.  This announcement moves the awaited single trans-Tasman patent application closer to reality.

Around 5700 applications filed in New Zealand are also the subject of a corresponding application in Australia.  A single patent application process will remove duplication, drive efficiencies and reduce costs, making it easier (and hopefully cheaper) for businesses to protect their intellectual property in both jurisdictions.

The related legislation and press releases indicate that main features of the system would involve:

• Each office having an online filing portal allowing an application to be filed in both countries in a single transaction.  A filing date and application number would be assigned to the applications in accordance with the law and practice of each country.
• Patent applications for the same invention will be examined by a single examiner from either Australia or New Zealand. The process will take account of the separate national laws and will produce two separate Australian and New Zealand patents.
• IPONZ and IP Australia will each retain their existing responsibilities for granting or refusing the patents.

IP Australia and the Intellectual Property Office of New Zealand (IPONZ) have been working towards implementation of a single Australian-New Zealand patent application for several years. The process started in October 2011 when both patent offices agreed on a three-year implementation plan aiming to implement a single application and examination process for patent applications filed both in Australia and New Zealand.

The process requires several stages to be implemented, including work sharing and knowledge sharing operating between the offices, and cooperative legislative reform.  In New Zealand, the legislative changes form part of the long awaited new NZ Patents Act 2013 which received royal assent on 13 September 2013.   Amongst many changes, this Act substantially conforms the NZ filing and examination requirements and test to Australian law therefore facilitating implementation of the single application.  Proposed amendments to the Australian Patents Act form part of the Intellectual Property Laws Amendment Bill 2013 issued on 30 May 2013.  This Bill has yet to receive royal assent.  It is expected that the single trans-Tasman patent application will be implemented following commencement of the relevant legislation in New Zealand and Australia.  It is therefore not expected to be offered until 2015.

Phillips Ormonde Fitzpatrick currently has patent filing services in both Australia and New Zealand, and once implemented will offer the single trans-Tasman patent application filing option.

If you have any queries on the proposed single trans-Tasman patent application please contact Edwin Patterson