Sunday, November 17, 2013

New Zealand prepares for SAP & SEP

e-commerceIntellectual property law is replete with acronyms. Commerce Minster Craig Foss recently added two more. We are now going to have a single application process (SAP) and a single examination process (SEP) for New Zealand and Australian patent applications.

The press release is a little bit tabloid in that the title 'Single trans-Tasman patent application approved' doesn't quite match the story. There is no single patent application. Merely a process for filing two applications.

A recent Cabinet paper and Regulatory Impact Statement (Cabinet paper) seeks approval to implement the SAP and the SEP for New Zealand and Australian patent applications, and to develop a bilateral arrangement between the two countries.

Single Application Process (SAP)

New Zealand and Australia are two separate countries. They have separate application processes. Under the new regime, patent applicants will continue to file separate patent applications in each country if that is what they want to do.

If the SAP goes ahead, patent applicants wanting to cover both countries will have the option of using a single SAP portal in New Zealand or Australia to file a pair of applications. The New Zealand application will be referred to the Intellectual Property Office of New Zealand (IPONZ) for examination. The Australian application will be referred to IP Australia for examination.

One of the benefits of the SAP stated in the Cabinet paper is cost savings to applicants. The information required to file the pair of applications will only need to be provided once [para 99]. We are told that this will provide data entry time savings to patent attorneys which may result in cost savings to applicants through reduced patent attorney fees [para 100].

There will be set-up costs and ongoing administrative costs that are not quantifiable [para 101]. Taxpayers are reassured that these costs are going to be recovered through increased patent application fees. Details of fee increases are not yet available, but are an important factor in whether or not there are in fact cost savings to applicants.

Single Examination Process (SEP)

If implemented, the SEP will see corresponding applications referred to a single patent examiner who will examine both applications simultaneously. The examiner could be based in either New Zealand or Australia [para 26]. The applicant does not choose. The examiner assigned to a pair of applications will be determined by agreement between IP Australia and IPONZ [Recommendations #3).

The SEP ends when the pair of applications has been accepted or refused [para 27]. All processes following acceptance or refusal (including grant) will be handled separately by each office. Hence there will still be separate New Zealand and Australian patents granted.

The Pilot Programme

The SAP is likely to be rolled out in 2015. An SEP pilot program will run for 18-24 months once the SAP is implemented. The SEP pilot program will then be subject to a review to determine whether it is worthwhile to implement fully. We will then be either fully implementing SEP or pulling the plug.

We haven't been told how corresponding applications will be selected for the SEP pilot program. The Cabinet paper states that the pilot program will involve 'a small number of corresponding applications' [128] and that it will run long enough to 'ensure that there are sufficient applications processed to provide meaningful information' [129].

There is no detail available yet about the selection criteria that will be applied to pairs of patent applications in order to enter the SEP. Will patent applicants elect to enter the SEP? Or will SEP be imposed on them? Is filing under SAP a pre-requisite for entry into the SAP? Or are they independent?

The legislation proposed empowers IP Australia and IPONZ to proceed without applicant consent. I guess it will depend on the level of interest in SEP. If there is not a large uptake then pairs of applications will be placed in the SEP program against the wishes of applicants.


About one third of Australian patent applications have a corresponding application in New Zealand. Examination timeframes in Australia are longer than those in New Zealand. IP Australia will be able to utilise IPONZ examination resources 'to ensure operational efficiencies can be maintained at least over the medium term' [para 31].

So which cases will IP Australia offload to IPONZ?

The New Zealand Patents Act 2013 will impose a change in examination to include examination for inventive step as well as novelty. IPONZ examiners will require significant training to examine patent applications under the new legislation [para 34]. This would suggest that suitable candidates for SEP would be 'easy cases', national phase entries with no inventive step issues.

As noted in the Cabinet paper, there will be significant differences between New Zealand and Australia on the criteria for granting a patent. The New Zealand Act contains legislative exclusions for methods of medical treatment, methods of diagnosis and computer programs. The claims in each of a pair of patent applications may be completely different.

I always thought that the invention is defined by the claims. A pair of applications with different claim sets relate to a different inventions. This would suggest that suitable pairs of applications are ones that claim subject matter in chemical, mechanical and electrical art areas that do not fall within New Zealand's excluded categories.

A further point to consider is that IPONZ views the SEP as an opportunity to leverage off IP Australia's examination experiences. This in turn will make it easier to bring IPONZ examiners up to the requisite standard for examining patent applications [para 113]. IPONZ intends to hire new examiners to deal with increased work volumes [para 118].

Patent applicants with a pair of applications will need to weigh up the benefits of entering the SEP program against the risk that their patent applications will be used to train IPONZ examiners. I can certainly see the benefit for IP Australia and IPONZ of SEP. It is the advantage for patent applicants that is not immediately clear to me. The SEP pilot program will be an interesting one to watch.

Photo courtesy of author Garfield Anderssen under Creative Commons license.

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