Australian & NZ single patent examination: Soon you may not have a choice

Date: 2015-11-30
Author: Greg Noonan

A single trans-Tasman patent regime allows counterpart Australian and NZ patent applications to be examined by a single examiner in either country. It now emerges that such combined examination can be made compulsory by the patent office, even without the applicant’s election.

NZ’s Patents Amendment Bill
In 2013, we reported in ‘New Zealand approves trans-Tasman patent regime’  that the NZ government announced approval of a single trans-Tasman patent regime with Australia. The NZ government originally timetabled to accept select cases of simultaneous filing in early 2015, but nothing has happened much until earlier this month.

Earlier this year, the Australian government passed the corresponding legislation (see our related article 'Amendments to Australia’s Intellectual Property Laws'). In comparison, the NZ government has only introduced the related Patents Amendment Bill into parliament on 3 November 2015. The Bill is scheduled to receive its First Reading in upcoming parliament sittings by the end of 2015.

What has changed?
It has been well publicised that a goal of the proposed regime is to remove duplication of work. Those familiar with the regime will recall that the proposed regime has two separate components: a single application process (SAP) which deals with administrative aspects of lodgement, and a single examination process (SEP) which deals with the more substantive questions of patentabilty during prosecution. 

A perhaps surprising development brought by the Bill is compulsory SEP. That is, the patent offices can forcibly examine counterpart Australian and NZ patent applications by a single examiner, even if the applicant does not wish so.

In an earlier release of the NZ government’s proposal, it was said that:

“The SAP and SEP will be optional processes, meaning that applicants could choose to file separate applications with IPONZ and IP Australia and have each application examined separately by IPONZ and IP Australia as they do now.”

However, according to the explanatory note of the Bill, if the patent offices deem combined examination appropriate, the patent applicant’s wishes are irrelevant. Quoting the explanatory note:

“Applicants could indicate their willingness to enter the SEP …. Alternatively, entry to SEP could be compulsory, with the applicant being given no choice in the matter. IPONZ and IP Australia could identify pairs of corresponding applications that could be examined under the SEP, and these applications would be examined under the SEP.”

The explanatory memorandum of the corresponding Australian legislation is silent on such compulsory SEP.

The Commissioner’s broad power
No compulsory SEP is in fact set out in the draft Bill. However, in either country, compulsory SEP is simply enabled by broad provisions which allow the patent commissioner in either country to delegate his/her power to a patent official of the other country. In particular, there seems to be no restriction on the types of power or conditions under which the patent commissioner can exercise this discretionary delegation. The same observation applies to the equivalent Australian legislation.

These broad provisions do seem to allow compulsory SEP at the election of either patent office. In fact they are so broad that, arguably, if an applicant has an NZ application (but not an Australian counterpart), IPONZ may still delegate IP Australia to examine the NZ application (and quite possibly vice versa). It remains to be seen whether the accompanying regulations when made provide some restrictions to such discretionary delegation.

The SEP has a respectable goal of streamlining patent processes in two countries, but may not be always a recommended route. We commented briefly in earlier articles that, if given a choice, it might be beneficial to avoid SEP during the early stage of the regime. For example, examiners of one country may still be familiarising with validity requirements of the other. While the patent legislation of the two countries have been much aligned recently, issues such as patentable subject matter or conflicting applications (i.e. whole of contents prior art) still require different treatments in the two countries. With compulsory SEP, there will be instances where these potential issues are encountered. Although the regime is still some way from being implemented, it would no doubt assist patent applicants to understand how IPONZ and IP Australia plan to identify and pair up corresponding NZ and Australian applications for the SEP.