Single Patent Filing and Examination in Australia and New Zealand Almost a Reality

As we reported late last year, the Intellectual Property Laws Amendment Bill 2014 was read by the Australian House of Representatives. On 9 February 2015, the bill passed the Australia Senate and will soon become law in Australia as the Intellectual Property Laws Amendment Act 2015.

One significant aspect of the new law is the introduction of a Single Application Process (SAP) and a Single Examination Process (SEP) for Australia and New Zealand patent applications.

• SAP allows either the Australian Patent Office or the New Zealand Patent Office to accept the filing of applications, correspondence, and other documents and accepting payment of fees, with the effect that the documents are taken to be filed and the fees are taken to be paid under the law of the other country.
• SEP allows a patent examiner in either jurisdiction to simultaneously examine corresponding patent applications under the laws of both countries as a delegate of each country’s Commissioner of Patents.

Under SAP, applicants wishing to file applications in Australia and New Zealand for the same invention can file an Australian application and a New Zealand application at the Australian Patent Office and pay all of the fees necessary for both applications as a single amount in Australian dollars. As an alternative, both applications may be filed at the New Zealand Patent Office and all of the necessary fees for both applications paid as a single amount in New Zealand dollars. This simplified filing process is expected to result in cost savings for patent applicants.

Notwithstanding SEP, patents granted in Australia and New Zealand will be separate and independent. Post-grant proceedings, such as re-examination, enforcement and revocation, will need to be conducted separately in each jurisdiction.

Regulations for implementation of SAP and SEP have not yet been drafted. However, the Australian Patent Office has released a consultation paper that provides an overview of what is intended for inclusion in the regulations.

The recently commenced New Zealand Patents Act 2013 also requires amendment in order to allow implementation of SAP and SEP. In this regard, a Bill is expected to be introduced into the parliament later this year.

Watch this space for further developments!