NZexit?

The Commerce Select committee of the NZ Parliament has recommended that NZ should not continue with the proposed Single Application and Examination Processes for patent applications in both Australia and NZ. The committee, however, did support continuing with the single trans-Tasman patent attorney regime.

As IP Australia points out, Australia passed the IP Laws Amendment Act 2015 to implement this process. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill was introduced into the NZ Parliament last year.

The NZ government’s response to the recommendation is not known at this stage.

Intellectual Property Laws Amendment Bill 2014

After the consultation, the Intellectual Property Laws Amendment Bill 2014 has been introduced.

  • Schedules 1 and 2 aim to implement the TRIPS Protocol:

    According to the EM:

    Under the new scheme, Australian laboratories will be able to apply to the Federal Court for a compulsory licence to manufacture generic versions of patented medicines under specific conditions, and export these medicines to developing countries. Adequate compensation for the patent holder will be negotiated, to ensure that they are not disadvantaged by the arrangements.

    Schedule 1 introduces provisions to implement the “interim waiver” agreed in the Doha Declaration 2001; Schedule 2 implements the TRIPS Protocol regime agreed in 2003 (or, I think, 2005).

    According to the EM, only one licence has been issued under these regimes – Canada in 2007. Apparently, Canadian generics would like to engage in further licensing, but the procedures are too complicated. Also, Least Developed Countries do not need to provide patent protection until 2016 and there is said to be a lack of awareness of the regime.[1]

  • Schedule 3 confers jurisdiction over plant breeder’s rights matters on the Federal Circuit Court (in addition to the Federal Court)
  • Schedule 4:
    • introduces the “single examination” model for patent applications in Australia and New Zealand;[2]
    • the single regulatory regime for patent attorneys and trade mark attorneys in both countries – the so-called trans-Tasman regulatory regime; and
    • provides for a single address for service in either Australia or New Zealand to be used under the patents, trade marks, registered designs and plant breeder’s rights legislation.
  • Schedule 5 is headed “Technical Amendments” which include repealing “unnecessary document retention provisions” and addressing “minor oversights in the drafting of” the Raising the Bar Act. These include:
    • amending s 29A so that an international applicant under the PCT cannot require anything to be done in Australia until the application enters the national phase;
    • amending s 29B so that only the prescribed period under s 38(1A) applies to Paris Convention applications;
    • amending ss 41 and 43 in relation to disclosure requirements for micro-organism inventions
    • amending s 43 to permit reference to the combination of prescribed documents, not just to individual prescribed documents alone
    • the defence in s 119(3)(b) will be amended to bring it into line with the amended form of s 24(1)(a)
    • amending s 191A so that the requirement for the Commissioner to hear both parties prescribed in s 191A(4) applies only in entitlement disputes.

Intellectual Property Laws Amendment Bill 2014

Explanatory memorandum


  1. The Regulatory Impact Statement included in the EM estimates that 63 in-house legal professionals and 128 patent attorneys in external firms will need to familiarise themselves with these changes for a total start up cost to business of $13,782.60 and an ongoing annual cost of $105. These costs include allowance for savings in legal costs because it will be possible to bring proceedings for infringement of plant breeder’s rights in the Federal Circuit Court, rather than the Federal Court. Perhaps confusing costs with earnings, the Regulatory Impact Statement relies on the ABS Employee Earnings and Hours Survey to estimate the average cost of patent and trade mark attorneys as $50 per hour (junior solicitors $60 per hour, IP attorneys $74.10 per hour and barristers $92.70 per hour, after including a 50% loading for overheads). The Statement does recognise that charge out rates “for lega”for legal professionals can range from $120 per hour to $800 per hour or more, viewed on 4 December 2013 at http://www.legallawyers.com.au/legal-topics/law-firm-sydney/solicitor-prices/. These costs do not reflect the opportunity cost of labour.” You may also be interested to know that the Regulatory Impact Statement estimates the costs of an application to the Federal Court for a licence at around $21,650 for the applicant.  ?
  2. The substance of the two countries’ respective patent laws is not being harmonised (yet).  ?

Streamlining patent applications

Back in February, the Prime Ministers of Australia and New Zealand issued a statement about harmonising IP laws (and procedures) between their countries.

Today, the Minister for Innovation, Industry and Science and the New Zealand Commerce Minister issued a further statement “revealing” that:

  1. there will be a single application process for seeking patents in both countries from 2013; and
  2. a single examination of the application for both countries will be introduced from 2014.
The two countries’ patent laws will continue to be different but, when these steps are introduced, there will be an integrated application and examination process to get a patent in both countries.
According to the Australian Minister:
The savings in professional costs alone could be as high as $2,000 to $5,000 per invention — money that should and will stay in the pocket of the innovator.
Not entirely clear from the information released officially how things have progressed since February. Press Release here; Fact Sheet there (pdf).

Trans Tasman IP harmonising – patents

Prime Ministers Gillard (Australia) and Key (EnZed) have reaffirmed their countries’ respective commitment to closer co-operation in (industrial) IP matters between the two countries as part of the Trans Tasman Single Economic Market.

Apparently, over the next 5 years our countries will work towards:

  1. one regulatory framework for patent attorneys;
  2. one trade mark regime;
  3. one application process for patents in both jurisdictions; and
  4. one plant variety right regime.

According to the Statement issued on 16 February, the single application process for patents in both jurisdications will involve 2 stages. In the first stage, “both countries will rely on each other’s work, where possible, to build confidence and simplify processes”. In the second stage, there will be a “single examination process”.

Apparently, this will not involve changing either country’s patent laws as the Statement explains:

Examiners will grant or refuse applications under each country’s law. It will not be necessary for our laws to be identical.

and

Australia and New Zealand will operate as one integrated patent examination entity in practice – not in law. Both countries will retain flexibility to implement legislation and policies.

All this is forecast to take 3 years.

In contrast, streams 2 and 4 envisage one (trade mark or plant breeder’s) regime. That seems to indicate than one or other of our respective trade mark or plant breeder’s laws will need to change because (so far as I understand it – not very far at all, really) EnZed trade mark law is much closer to “modern” (ie. 1994) UK legislation and hence EU rules. Is it too soon to start boning up on ECJ rulings?

See also here and here.