Friday, April 5, 2013

The last of the patent attorneys

Patent attorneys are a rare breed in New Zealand. Under a new regulatory framework announced this week we are going to become even scarcer. Or maybe we are simply going to see fewer registered patent attorneys who do not do patent attorney work.

The Governments of Australia and New Zealand have announced an arrangement to give effect to a joint regulatory framework for patent attorneys to register and practice between Australia and New Zealand. The two governments are pursuing a Single Economic Market (SEM) agenda which aims to create a seamless trans-Tasman business environment.

The patent attorney profession is a small profession. Regulation of this profession is seen as low hanging fruit to demonstrate progress toward stronger relationships between Australia and New Zealand.

Patent Attorney Services

Under the new regime only registered patent attorneys will be able to provide 'patent attorney services' in Australia and New Zealand. The term 'patent attorney services' means the undertaking of any of the following services in Australia or New Zealand for gain-
  • applying for or obtaining a patent in Australia or New Zealand or elsewhere on behalf of another person;
  • preparing or amending specifications or other documents for the purposes of the patent law of Australia, New Zealand or any other country on behalf of another person; and
  • giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.

A patent attorney wishing to practice in Australia or New Zealand must be registered on a single register. There will no longer be separate registers for Australian patent attorneys and New Zealand patent attorneys.

We are not sure what the new register is going to be called yet. One name floating around is a 'trans-Tasman register', an obscure reference to the Tasman sea that separates the two countries.

Employment requirements

Under the current New Zealand system a prospective patent attorney needs three years employment by a patent attorney in New Zealand or by the Intellectual Property Office of New Zealand (IPONZ). It is not uncommon for New Zealand patent examiners to seek registration as a patent attorney.

The new regime requires a minimum of 2 years employment in a position or positions providing experience in:
  • searching patent records;
  • preparation, filing and prosecution of patent applications;
  • drafting of patent specifications; and
  • providing advice on interpretation, infringement and validity.

Employment by IPONZ may satisfy some but not all of the new employment requirements. We are therefore likely to see IPONZ producing fewer registered patent attorneys.

Academic qualification

Academic requirements in New Zealand are dictated by market forces rather than legislation. Registered patent attorneys who provide patent attorney services generally have a technical qualification.

Under the new regime there will be a legislative requirement to hold a tertiary qualification in a field of technology that contains potentially patentable subject matter.

New Zealand practitioners who do not provide patent attorney services (for example trade mark practitioners) do not usually hold technical degrees. Nevertheless, these practioners historically sought qualification as a registered patent attorney for career advancement. For example, in order to join a New Zealand patent attorney partnership you need to be a registered patent attorney yourself.

Under the new regime we will see fewer trade mark practioners qualify as patent attorneys due to the new academic qualification requirement.

Non-resident attorneys

There is no residency requirement for New Zealand patent attorneys. The New Zealand Patent Attorney Register shows that there are New Zealand patent attorneys resident not only in New Zealand but Australia, Germany, Hong Kong, Ireland, Singapore, Switzerland, the United Kingdom and the United States.

Most of these patent attorneys are New Zealand citizens who have worked for a patent attorney firm in New Zealand for the requisite 3 years before heading overseas.

There is no proposal to introduce a residency requirement in the new regime. However, there is a need to ensure that patent attorneys are properly trained by patent attorneys in Australia or New Zealand. It is possible that we will see a requirement for employment by a patent attorney in Australia or New Zealand. This is what is already in place in New Zealand.

What next?

It is difficult to predict when this framework will come into effect. The regulation of the profession is covered in the Patent Attorneys Bill which was divided out of the Patents Bill. The regulatory framework provisions were pulled out of the Patents Bill so that the Patents Bill would not be held up.

Ironically, we are now waiting for the Patents Bill to proceed before we can implement the legislation necessary for the regulatory framework. It is likely that we will see an amendment to the New Zealand Patents Bill to add the regulatory framework provisions back in.

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