New Trans-Tasman Patent Attorney regime
In March 2013 Australia and New Zealand signed a Bilateral Arrangement for implementing the Trans-Tasman patent attorney regime (“the joint registration regime”). The joint registration regime will provide a single system of accreditation, registration and professional regulation of patent attorneys in both countries.
Information setting out the background and purpose of the joint registration regime can be found on the MBIE website.
The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill, which is needed to implement the new joint registration regime, is due to come into force no later than 24 February 2017 , and will amend the Patents Act 2013.
Repeal of the New Zealand Patent Attorney provisions under the Patents Act 1953
The Patent Attorney provisions under the Patents Act 1953 governing the existing New Zealand Patent Attorney regime will be repealed when The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill comes into force.
Recognition of registered New Zealand Patent Attorneys under the joint registration regime
Every person registered as a New Zealand Patent Attorney under the Patents Act 1953 (“the old regime”) will automatically be recognised as a patent attorney under the new joint registration regime immediately after new Part 6 of the Patents Act 2013 comes into force.
Importance of having your New Zealand Patent Attorney registration up to date
Because only registered New Zealand Patent Attorneys will be recognised as Trans-Tasman Patent Attorneys when the new joint registration regime takes effect, it is vitally important that you ensure your New Zealand Patent Attorney registration is up to date. If you are not registered when the new joint registration regime takes effect you will have to complete the entire registration process under the new joint registration regime to become a Trans-Tasman Patent Attorney.
New Zealand Patent Attorney renewal fees are not required for 2017
To help simplify the transition to the new joint regime, the New Zealand Commissioner of Patents has made the decision not to require registered New Zealand Patent Attorneys to renew their patent attorney registration for the 2017 year (irrespective of whether the new joint regime takes effect before or after the renewal fee falls due on 1 January 2017).
In keeping with this decision, the Commissioner will not remove any registered New Zealand Patent Attorney from the New Zealand Patent Attorney Register for non-payment of the 2017 renewal fee before the new joint regime takes effect. This will ensure that all registered New Zealand Patent Attorneys are recognised under the new joint registration regime.
As part of this decision, IPONZ will not:
- send New Zealand Patent Attorney registration renewal reminder notices for the 2017 year; or
- process any 2017 renewal requests.
The Commissioner will, however, accept requests from people wanting to restore their New Zealand Patent Attorney Registration under regulation 161 of the Patent Regulations 1954 prior to The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill coming into force.
The Commissioner has made this decision pursuant to regulation 161 of the Patent Attorney Regulations 1954.
Transitional provisions for persons who have already passed a New Zealand Patent Attorney exam paper
Anyone who has passed at least one New Zealand exam paper under the old regime may, when the new joint registration regime takes effect, continue sitting the New Zealand exams for a further 4 years from that date (2017-2020). If all New Zealand exam papers are passed in this time, they will be considered as meeting all the knowledge requirements under the new joint registration regime. A person who has passed all the New Zealand exam papers will still need to apply for registration under the joint registration regime and meet all other criteria for registration as a Trans-Tasman Patent Attorney.
For the avoidance of doubt, the Commissioner will not allow any person to sit New Zealand Patent Attorney exams in 2017 unless they have already passed at least one exam paper at the end of 2016.
The Commissioner will advise of the application deadline for persons wishing to sit further New Zealand Patent Attorney exams in 2017, after the new joint regime takes effect.
New Zealand Patent Attorney examination papers
The New Zealand Patent Attorney exams consist of the following papers:
a. The New Zealand Law and practice relating to patents and designs - two papers A1 and A2 with a fee payable for each paper.
b. The New Zealand Law and Practice relating to trade marks.
c. Foreign Patent Law.
d. The preparation of specifications for NZ patents (also known as “Drafting”).
e. Patent attorney practice in New Zealand, including the interpretation and criticism of patent specifications (also known as “Criticism”) Regulation 155-160.
Please note that:
- Candidates cannot sit more than three subjects in any one year.
- Papers A1 and A2 are co-requisites and must be sat together.
- A pass in subject A is recorded when the average of the A1 and A2 exam results is not less than 50%.
- Candidates cannot sit subjects D or E until they have gained a pass in subject A.
- A candidate who only gains a single credit in any one year must complete all of the subjects of the examination within five years or the credit for that subject will lapse.
- There is provision for seeking an extension of time regarding the credit of a single paper (refer Regulation 159 (3) ).
- Candidates must sit the examination at one of the specified locations. Candidates cannot sit papers outside of New Zealand.
Refer Patent Regulations 1954 Regulations 155-160 for more information.
Checklist for submitting an application to sit further exams
Your application to sit any remaining New Zealand Patent Attorney exams should include:
- A letter listing the subjects you want to enrol for, and your contact details.
- Provide billing details by completing the New Zealand Patent Attorney Examination form [334 KB PDF].
Please send your application to IPONZ.
Contact details for the Examination Board: