Rugby is a sport
with which many New Zealanders and Australians are not merely
familiar, but are self-appointed experts. During a match it is
not uncommon to hear the cry "Don’t kick it, pass
it!" when retaining the ball is thought to be more advantageous
than a significant territorial gain and the probable loss of
possession. At other times, "Don’t pass it, kick
it!" might be heard.
Zealand and Australian governments have decided to "kick it"
rather than "pass it" by implementing a single application and
examination process for patents. In attempting to achieve a
significant gain in the push for a single economic market
between the two countries, they have chosen a path of greater
uncertainty. Introducing a PPH between the countries might have
been the more controlled and safer "pass it" approach.
SAP and SEP explained
patent practitioners are familiar with the PPH, they may be
unfamiliar with the single application process (SAP) and single
examination process (SEP) proposals. And, when many other
countries are expanding the reach and scope of PPH programmes,
why are New Zealand and Australia taking this other path?
recent report from the Office of the Minister of Commerce
in New Zealand outlined the following objectives in developing
the SAP and SEP models:
|Will New Zealand
and Australia's kick toward harmonisation succeed?
Photo source: DamjanBNZ (Flickr)
Reduction of time and resources spent by New Zealand
businesses applying for and obtaining patents in both New
Zealand and Australia.
Minimising the administrative costs of running the patent
Ensuring patents granted in Australia and New Zealand are
of a similar, high quality standard.
Ensuring examination approaches are consistent between
Australia and New Zealand.
Pros and cons
commendable goals, but who really stands to benefit and who
stands to lose on implementation of a SAP and a SEP, and does
the level of uncertainty introduced justify this model as
opposed to a PPH?
proposed SAP, applicants wishing to file a patent application
in both New Zealand and Australia will no longer be required to
file a separate application in each country. The IP Office of
New Zealand (IPONZ) and IP Australia will provide SAP portals
on their websites, and either can be used to file in both
countries upon payment of a combined fee. Although significant
responsibility attaches to the filing of a patent application,
the process is largely administrative and the SAP should
simplify this step.
raises more interesting questions. Under the SEP, a single
patent examiner will examine the New Zealand and Australian
applications simultaneously. The examiner may be either an
examiner at IPONZ or at IP Australia. Acceptance of
applications, grant of patents and any oppositions will be
handled by the office in the country of application. In other
words, all processes beyond the examination stage will be
handled by the local patent office.
principle, the SEP concept seems admirable. It ought to be
efficient and therefore bring cost savings to applicants. But
what about examination quality?
practitioners the world over are well-aware that the quality of
an examination can be highly dependent on the particular
examiner working on that application. Examination guidelines
help with consistency of examination quality and standards, but
there can be great variability among examiners in all patent
offices. Different people have varying degrees of understanding
of an invention, the prior art and the details of local law and
practice. Practitioners know that how smoothly an application
proceeds through the examination process depends very much on
the specific examiner.
magnifies the uncertainty. If an applicant strikes a poorly
trained or underperforming examiner, the quality may well be
below an acceptable standard. The outcome may be grant of an
overly broad patent, or conversely grant of an unreasonably
narrow patent or even no grant of a patent at all. Under the
SEP, both eggs will be in one basket - if the New Zealand
application is poorly examined, so too will the Australian
application be poorly examined. Since the particular examiner
assigned to an application is a lottery, the stakes will now be
understanding is that a patent application filed under the SAP
and SEP procedures will be forwarded to a single examiner at
either IPONZ or IP Australia. But who chooses? Can the
applicant elect whether the application is to be examined at
IPONZ or IP Australia, or is this to be controlled by one or
other patent office? In theory, it shouldn’t
matter. However, because New Zealand patent examiners currently
do not examine applications for inventiveness, examination
quality may not be consistent between the two patent offices,
at least until extensive training has been implemented and
quality can be assured.
Patent law reform raises more uncertainty
is also in the process of major patent law reform. The new
Patents Act 2013 was passed into law last September and will
come into force this September. The regulations have been
drafted and submissions from interested parties have been
sought. Many of the changes will bring New Zealand patent law
and practice in line with that of Australia, but there will
remain several significant differences that will have an
impact. For example, under Australian law, inventiveness is
assessed differently than in New Zealand. And, Australia has a
considerably more liberal approach to allowing software patents
and patents for therapeutic and surgical methods of treating
humans and animals. The imminent changes in New Zealand, and
ongoing significant differences, will add complexity to the
effective operation of a SEP system.
official fees increase for applicants as a consequence of
implementation of the SAP and the SEP? The report from the
Office of the Minister of Commerce in New Zealand notes that
there will be one-off costs for IT development and on-going
operating costs. However, the report also states that the costs
have yet to be quantified. What is clear however is that the
costs incurred by IPONZ will be recovered through fees. In
other words, applicants will undoubtedly pay more.
The PPH option
fact sheet issued jointly by IPONZ and IP Australia, the
benefits of patent examination integration are potential
savings in professional fees and costs, a faster examination
process and consistent and high quality patent examinations.
But, there appears to be no analysis of whether a PPH between
Australia and New Zealand would also achieve these
proposed SAP, being largely an administrative function, has
merit. But, the proposed SEP comes with great uncertainty for
applicants. If applicants are happy to roll the dice with IP
rights, the planned SEP will present no issues. However, those
wishing to tread with caution and be more assured of patent
quality should elect to have their New Zealand patent
applications examined at IPONZ and their Australian patent
applications examined at IP Australia.
Zealand and Australian governments should pass it, not kick
Lynch is a partner at Catalyst Intellectual Property in New Zealand