SAP and SEP ditched across the Ditch

19 October 2016

New Zealand has ended the prospects of having single trans-Tasman processes for patent applications and patent examinations, despite Australian assent to the plan.  The decision comes as a considerable blow to the Single Economic Market programme agreed between Kevin Rudd and John Key several years ago.

The New Zealand Parliament has voted to approve amendments recommended by its Commerce Committee that clause 5 be deleted from the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill.  The decision to remove the clause, which would have implemented a single patent application process (‘SAP’) and a single patent examination process (‘SEP’) by the Intellectual Property Office of New Zealand (‘IPONZ’) and IP Australia, comes after months of debate on the issue.

The SAP would have allowed applicants to make a single application in either country for a patent, and the SEP would have allowed one examiner to examine the application with respect to both jurisdictions.  The Australian Parliament has already passed legislation, the Intellectual Property Laws Amendment Act 2015, to allow for the SAP and SEP in Australia, and has been waiting for New Zealand to pass its own enabling legislation.

On 13 July 2016, in the report of Commerce Committee, it was noted that the provision had provoked much concern, and it was recommended to Parliament that the clause which would have inserted the SAP and SEP into the Patents Act 2013 should be deleted.  Concerns raised in the report included:

  • The lack of benefits either to businesses or to patent attorney firms making applications on their behalf, with only very small cost and time savings
  • Increased costs of IPONZ examination and filing fees to New Zealand businesses 
  • Significant IT infrastructure costs to establish, implement and maintain the SAP
  • Significant costs establishing the SEP, including for examiner training and IT
  • Belief that applicants are unlikely to use the SAP or SEP for commercial reasons
  • Work-sharing initiatives that already provide alternative means of achieving the benefits of a SEP, without the need to amend the Act, and involve less cost to IPONZ, including increased online availability of the examination reports 
  • That WIPO was developing a proposal to modify its ePCT system to allow filing of multiple national phase applications, which would provide similar benefits to a SAP, but at a much lower cost to IPONZ

It was noted that, in anticipation of New Zealand passing its own legislation, IP Australia had not undertaken any further work on the SAP and SEP proposal.  It was concluded that on account of the significant cost to IPONZ, the low likelihood that it would be used, and the lack of substantial savings to New Zealand business, that clause 5 be deleted to remove the empowering provisions regarding the SAP and SEP.

Second Reading speeches in the New Zealand Parliament began on 20 September 2016, and resumed on 13 October 2016. Although significant criticism was levelled against the Committee with respect to how they had quantified costs and a lack of consultation with certain stakeholders, the amendments were nevertheless approved with bipartisanship.

Although this essentially puts to an end the prospect of an Australia-New Zealand SAP and SEP, these were not the only initiatives included in the Bill for the establishment of a Single Economic Market.  Unaffected by the changes is the implementation of a single trans-Tasman registration scheme for patent attorneys.

Nathan Hauser