One Patent Application, One Examination, One Profession, Two Patents

by FPA Patent Attorneys

The Intellectual Property Laws Amendment Bill 2013 was introduced into Parliament on 30 May 2013. Schedule 5 seeks to provide enabling legislation for implementing two previously announced initiatives: to bring together the Australian and New Zealand patent attorney professions and to introduce a scheme wherein patent examiners in each country can jointly examine either corresponding patent applications filed in both countries or a single patent application covering both countries, leading to grant of separate patents under the laws of the respective countries.  

It is intended that legislation matching Schedule 5 will be passed by the New Zealand Parliament.  Given the very slow progress of the new New Zealand Patents Bill into law, enactment of the arrangements proposed by Schedule 5 may be some time off!

Dual Examination

The Bill introduces a person called a “New Zealand delegate” and provides that the persons to whom the Director of IP Australia can delegate his or her powers or functions under the Patent Act 1990 now include, in addition to employees of IP Australia, New Zealand delegates.1

A “New Zealand delegate” is “a New Zealand patents official who is a delegate under subsection 209(1A)”2.  A “New Zealand Patent Official” means “a person:

  1. who is an employee in any part of the State services of New Zealand; and
  2. whose functions or duties relate to the administration of a law of New Zealand relating to patents for inventions.”3

Other amendments make it clear that various actions under the Patents Act 1990 can take place in New Zealand, and that patent applications and documents generally can be considered lodged with IP Australia by being filed with the Intellectual Property Office of New Zealand (IPONZ).

The papers accompanying the Bill suggest that this is the first time such a scheme of co-operative examination has been introduced anywhere in the world.  

Merged Patent Attorney Professions

The Bill introduces a common supervision scheme by replacing the current supervising body in Australia, the Professional Standards Board for Patent and Trade Mark Attorneys, with a new entity called the Trans-Tasman IP Board.  This new Board consists of:

  1. a Chair;
  2. the Director-General of IP Australia;
  3. The New Zealand Commissioner of Patents; 
  4. at least 2 members nominated by the New Zealand Patents Minister to represent the New Zealand patent profession;
  5. at least 2 other members.

The maximum number of members is 10.  The stated intention is that the associated Regulations will provide for a single Trans-Tasman register of patent attorneys and common qualifications for registration. 

The Intellectual Property Laws Amendment Bill 2013 is currently before the House of Representatives.

1. Intellectual Property Laws Bill 2013, Schedule 5, Item 25, inserting ss25(1A) of Patents Act 1990

2. Intellectual Property Laws Bill 2013, Schedule 5, Item 55, amending Schedule 1 of Patents Act 1990

3. Intellectual Property Laws Bill 2013, Schedule 5, Item 57, amending Schedule 1 of Patents Act 1990


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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