Patents

18 January 2013

In October 2011 IP Australia and IPONZ agreed on a three-year implementation plan to improve the way patent applications are processed and examined. The three year implementation plan has three main stages: working sharing, single application process and single examiner process. The primary goals of the single application and single examiner processes are to remove duplication and drive efficiencies.

Since agreeing to the implementation plan, both offices have made good progress in understanding each other’s' patent application and examination processes.

Key to this work is the passage of the NZ Patents Bill 2008 which will more closely align the patents laws of New Zealand and Australia, and enable these patent outcomes to be progressed. IP Australia is working with the Ministry of Business, Innovation and Employment and IPONZ to develop legislative amendments to allow these initiatives to be implemented.

Updates from some of the work to date:

Stage 1: Work Sharing

In September 2012 IP Australia and IPONZ commenced an examination skills and knowledge pilot which is due to conclude in December 2012. The outcomes from the pilot will be used to inform the basis of future working sharing between the two offices.

The pilot involves IPONZ and IP Australia examiners working together on an Australian examination skills and knowledge program based on IP Australia’s recognition of prior learning model and competency based training system. The primary aim is to assess the resources required for a wider program, develop training procedures and protocols and assess system requirements.

The outcomes from the pilot so far have indicated that the underlying knowledge and skills used by examiners of both offices are very similar. Differences noted during the pilot primarily arise from different office practices and legislation. IPONZ examiners have received extensive internal training within IPONZ on inventive step in preparation for the anticipated new patent legislation. This has enabled the IPONZ examiners to participate fully in the work sharing pilot.

Stage 2: Single Application Process

IP Australia and IPONZ have agreed on the high-level design requirements for an electronic filing facility for submitting a single patent application. Implementation detail is currently being considered.

The following single application process has been proposed:

• Each office will have an electronic filing facility allowing an application to be filed in both countries in a single transaction.
• A filing date and application number would be assigned to the applications in accordance with the law and practice of each country.

Stage 3: Single Examination

Appropriate models for the single examination initiative are currently are being discussed with IP Australia.

16 February 2011

A single patent examination process for Australia and New Zealand

A single patent examination process is being initiated for patent applications in Australia and New Zealand, as part of the intellectual property outcomes for the Single Economic Market (SEM).

Under a single examination process, patent applications for the same invention will be examined by a single examiner from either Australia or New Zealand. The process will take account of the separate national laws and will produce two separate Australian and New Zealand patents. This will reduce duplication of work by the Australian and New Zealand Intellectual Property Offices.

This alignment of our systems will save time and money for businesses, by making it easier to protect their intellectual property (IP) in both countries.

Prime Ministers Julia Gillard and John Key made this announcement on 16 February 2011, while reaffirming their commitment to progress the SEM outcomes.

More information

• A single Patent Examination Process for Australia and New Zealand: Fact Sheet [43 kB PDF]
• Trans-Tasman Patents Implementation Plan
• Read the Prime Ministers' speech