NZ passes Patents Amendment Act

1 December 2016

The New Zealand parliament has passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act.  The Act makes a number of amendments to the Patents Act 2013, although, one notable amendment was missing.

The Act provides for a joint registration regime with Australia for patent attorneys, which will begin on 24 February 2017.  Since the late '90s, attorneys registered in either Australia or New Zealand had the option of obtaining registration in the other country as a mere formality.  According to the new system, new attorneys will automatically be qualified in each country—there will in fact be only one register of patent attorneys.  Existing attorneys in each country will automatically be entered onto the new joint register.

According to the new system, new attorneys will automatically be qualified in each country—there will in fact be only one register of patent attorneys.

The new system also provides for a Trans-Tasman IP Attorneys Board, which will be given the responsibility of managing both education of patent attorneys, and investigating complaints raised against patent attorneys.  There will also be a single Trans-Tasman Code of Conduct that will apply to all registered patent attorneys.

The Act also provides for amendments unrelated to the joint registration regime.  One amendment removes “unity of invention” from being a ground for a third party to oppose a patent application before grant.  There was never an intention for unity of invention to be a ground of opposition, and the amendment is therefore made retrospective to 13 September 2014.  The Act also allows for incorporated and mixed-partnership patent attorney firms in New Zealand.

Finally, the notable missing amendment relates to a single application and examination process in Australia and New Zealand.  The intention was to allow applicants to file applications in both countries using a single administrative step, and to have one examiner (from one country) examine the applications according to the respective laws of each country.  However, earlier this year the New Zealand Government elected not to follow through with this, and removed the relevant sections from the bill.