Single Patent Attorney Regulatory Regime with New Zealand commences

Published: 
23 February 2017

The single patent attorney regulatory regime between Australia and New Zealand came into force on 24 February 2017.

This reform is part of the Single Economic Market agenda, agreed to by the Prime Ministers of Australia and New Zealand in 2009, and implements a bilateral arrangement signed by both countries in 2013. The regime represents a ground breaking example of trans-Tasman cooperation.

The key features of the new regime are:

  • A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
  • The  Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
  • The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
  • Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
  • The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trade marks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
  • The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
  • Applications made to IP Australia for all IP rights (patents, trade marks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
  • A single address for service will not be available on 24 February 2017 for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future.

 

The new patent attorney regime is possible following the passage of legislation in both countries. In late 2016, the New Zealand Parliament passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 allowing for the regulatory regime to have effect in New Zealand. The Act along with the corresponding Australian legislation, Schedule 4 of the Intellectual Property Laws Amendment Act 2015, came into force on 24 February 2017.

Existing patent attorneys in both Australia and New Zealand were automatically registered as trans-Tasman patent attorneys on the commencement date.

Transitional arrangements will apply to those candidates who have started studying for knowledge requirements to become a patent attorney under the current New Zealand regime. The transitional arrangements can be found on the  Trans-Tasman IP Attorneys Board's website.