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Patents

Update 13 December 2013:

The New Zealand Government has released the discussion document, Proposals for Regulations to be made under the Patents Act 2013 PDF [331KB]. This document provides information on a range of proposed changes to New Zealand’s patent system. It also includes a high level overview of the proposed single application and examination processes for New Zealand and Australian patent applications.

Information on the proposed single application and single examination processes is on pages 38-40 of the discussion document, including specific questions on page 40 seeking stakeholder’s views.

We are working together with IPONZ on the detailed design of these processes. We encourage all interested parties to review the document and provide written submissions directly to patentsubmissions@mbie.govt.nz. This will help us refine the processes to ensure that they meet the needs of patent applicants in Australia and New Zealand.  

If there are any issues that you would like to raise with us, please email consultation@ipaustralia.gov.au.

Updated 24 October 2013:

One step closer to single application and examination processes

The New Zealand Government has approved the implementation of single application and examination processes for New Zealand and Australian patent applications. New Zealand's new Patents Act 2013 will be amended to allow for these processes.

The New Zealand Cabinet has committed officials to work with Australia to outline a framework for the single application and examination processes.

The key benefit for applicants is that they will be able to provide all the required information and fees for both patent applications in a single transaction. The Patents Act 2013 (NZ) will be modified to allow New Zealand to receive patent applications and fees on behalf of Australia.

Under the proposed single examination process, where a patent application for the same invention has been filed in New Zealand and Australia, both applications may be examined by a single patent examiner. The Patents Act 2013 (NZ) will be amended to allow the New Zealand Commissioner of Patents to delegate his or her statutory powers to employees of IP Australia.

Amendments to the Patents Act 2013 (NZ) will also include changes to implement the Bilateral Arrangement for the trans-Tasman regulation of patent attorneys.

For more information is available on IPONZ website.

Updated 18 January 2013:

In October 2011 IP Australia and IPONZ agreed on a three-year implementation plan to improve the way patent applications are processed and examined. The three year implementation plan has three main stages: work sharing, single application process and single examiner process. The primary goals of the single application and single examiner processes are to remove duplication and drive efficiencies.

Since agreeing to the implementation plan, both offices have made good progress in understanding each other's patent application and examination processes.

Key to this work is the passage of the NZ Patents Bill 2008 which will more closely align the patents laws of New Zealand and Australia, and enable these patent outcomes to be progressed. IP Australia is working with New Zealand’s Ministry of Business, Innovation and Employment and IPONZ to develop legislative amendments to allow these initiatives to be implemented.

Stage 1: Work Sharing

In September 2012 IP Australia and IPONZ commenced an examination skills and knowledge pilot which concluded in December 2012. The outcomes from the pilot will be used to inform the basis of future work sharing and additional training between the two offices.

The pilot involved IPONZ and IP Australia examiners working together on an Australian examination skills and knowledge program based on our recognition of prior learning model and competency based training system. The primary aim was to assess the resources required for a wider program, develop training procedures and protocols and assess system requirements.

The outcomes from the pilot have indicated that the underlying knowledge and skills used by examiners of both offices are very similar. Differences noted during the pilot primarily arose from different office practices and legislation. IPONZ examiners have received extensive internal training within IPONZ on inventive step in preparation for the anticipated new patent legislation. This enabled the IPONZ examiners to participate fully in the work sharing pilot and to quickly gain competency in a number of key areas of Australian examination practice.

Stage 2: Single Application Process

IP Australia and IPONZ have agreed on the high-level design requirements for an electronic filing facility for submitting a single patent application. Implementation detail is currently being considered.

The following single application process has been proposed:

  • Each office will have an electronic filing facility 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.

Stage 3: Single Examination

Appropriate models for the single examination initiative are currently are being discussed with IP Australia.

Updated on 16 February 2011:

A Single Patent Examination Process for Australia and New Zealand

A single patent examination process is being initiated for patent applications in Australia and New Zealand, as part of the intellectual property outcomes for the Single Economic Market (SEM).

Under a single examination process, 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. This will reduce duplication of work by the Australian and New Zealand Intellectual Property Offices.

This alignment of our systems will save time and money for businesses, by making it easier to protect their intellectual property (IP) in both countries.

Prime Ministers Julia Gillard and John Key made this announcement on 16 February 2011, while reaffirming their commitment to progress the SEM outcomes.

More information

Last Updated: 16/12/2013

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