Monday, March 12, 2012

Not so streamlined

Traffic Jam at ITO
Back in July 2011 the New Zealand and Australian Governments announced a streamlined process for securing patent rights in New Zealand and Australia.

Inventors in New Zealand and Australia were promised "a faster, cheaper and more streamlined trans-Tasman patent process". A single patent application and examination process for both countries, said the Ministers, will remove duplication, drive efficiencies and reduce costs, making it easier for businesses to protect their intellectual property in both countries.

Sapere Research Group prepared a paper towards the end of 2011 titled "Trans-Tasman harmonisation of intellectual property law regimes - the costs and benefits". The New Zealand Ministry of Economic Development (MED) commissioned the report in order to outline, and where possible quantify, the costs and benefits to the New Zealand economy of these proposals.

In an ideal world the assessment of costs and benefits would have preceded the decision to implement the streamlined process. I guess we are not living in an ideal world.

The conclusions in the report don't exactly align with the media statements of the benefits. The report concludes that:
"[a] single patent examination is unlikely to provide substantial cost savings to New Zealand businesses, and there is the potential risk if it results in a delay to prosecution of a New Zealand patent."
Increase in official fees

At the moment there is a fee difference between the Australian and New Zealand patent offices. Both countries are said to operate to cost recovery principles. The report anticipates that New Zealand fees will need to rise to the Australian level.

The proposal is that New Zealand will pay Australia a fee for service (and vice versa) for applications filed in New Zealand but examined in Australia. There is some uncertainty as to what these service fees will be. There is a possibility that the fees will be set on a full cost recovery basis.

Those applications for New Zealand patents that are examined in Australia would need to cover the higher Australian cost. This suggests that the New Zealand fee would need to rise to at least the Australian fee.

It is therefore inevitable, states the report, that New Zealand official fees for a New Zealand only patent will rise. For dual applications, IP Australia assumes that applicants will pay the sum of the fees of both offices. The report suggests that this ignores the economies of scope for the patent offices. Economies of scope would suggest that the additional official fee for the secondary country should be less than the full fee for a stand-alone application.

Ironically these economies of scope are cited as a key benefit of the proposal.

Examination delays

The report observes that a patent granted is much more valuable than a patent application. New Zealand businesses state that they want to be able to control the speed of grant. The loss of the ability to prosecute patents quickly in New Zealand, if that is what the applicant wants, would be a disbenefit.

The Intellectual Property Office of New Zealand (IPONZ), according to the report, examines patent applications within twenty working days while in Australia if takes fourteen months from request for examination. The report notes that timeframes must equalise with the merging of the system to avoid gaming or arbitrage. IPONZ has acknowledged that timeframes will lengthen as their workload changes.

Further steps

The report concludes that this proposal to harmonise the patent application process on a trans-Tasman basis is not a priority for New Zealand business. A single patent examination is unlikely to provide substantial cost savings to New Zealand applicants. Furthermore, there is a potential risk if it delays securing grant of a New Zealand patent.

Few of the patent attorneys or businesses spoken to could identify any benefits associated with the proposal, other than possibly some efficiency in processing at the patent office. But let's not allow the views of clients get in the way of policy.

Photo courtesy of author We Conscious under Creative Commons licence.

1 comment:

  1. I guess that's the Ozzie way of streamlining for "efficiency". Let's get real mate, we are laid-back Brits who simply can do it better our way--relaxed and enjoying the moment.


Related Posts Plugin for WordPress, Blogger...