Thursday, July 21, 2011

Implementation of a trans-Tasman patent examination model

Further details have emerged of a plan to put in place a streamlined process for securing patent rights in New Zealand and Australia.

In an earlier post I discussed an announcement by the New Zealand and Australian Governments for a trans-Tasman process for patent applications.

Under the proposed regime a patent applicant will make a single application to a trans-Tasman portal.  The applicant will nominate New Zealand and/or Australia in the application.  The trans-Tasman patent application will create a New Zealand application, an Australian application, or a pair of applications that is examined by the same examiner.

IPONZ is not sure how they will decide who will examine each application or pair of applications.  I think it would make sense to have some inventions involving, for example, complex mining or nuclear technology examined by an Australian-resident examiner.  Some technologies derived from New Zealand indigenous flora and fauna may be best dealt with by a New Zealand-resident examiner.

Where a pair of applications arise out of a trans-Tasman application, they will be allocated a common filing date.  There is a 4 hour time difference between Perth and Wellington.  There will be some situations where a trans-Tasman application filed electronically is eligible for different filing dates depending on where the application is deemed to be made.

I have said in an earlier post that the New Zealand Patents Bill 2008 will not be proceeding this year.  The Bill will need to be passed before any further progress can be made.

Assuming the Bill comes into force in 2012, the project is expected to proceed in three stages.

Stage 1 – work sharing

From now until February or March 2012 IPONZ and IP Australia are going to share examination reports.

Stage 2 – single application process

From around April 2012 to September 2012 the two offices are expected to run a pilot programme.  Selected applicants will be able to opt-in to a single application process.   By the end of 2012 IPONZ expects to have a trans-Tasman portal in place for all applicants.

Stage 3 – single patent examination model

By June 2014 IPONZ and IP Australia expect that each new patent application will be examined under the new regime.

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