Integrated Patent Examination of Australian and New Zealand Patents

The Prime Ministers of both Australia and New Zealand announced the creation of an initiative to integrate examination of Australian and New Zealand patent applications within a three year period. The initiative is part of a larger framework of bi-lateral measures to simplify or harmonise trade relations between the two countries.

The integrated patent examination initiative announced is still at a high level and details of exactly how the initiative will be brought into practice is something the respective patent offices (IP Australia and IPONZ) will be focusing upon over the immediate future.

The initiative is directed to the scenario where patent applications for the same invention are filed in both Australia and New Zealand. The current practice is that the Australian application is examined by IP Australia and the New Zealand application is quite separately examined by IPONZ. The initiative is designed to replace the separate examination of the applications with an integrated approach so that both applications will be examined by a single examiner at either IP Australia or IPONZ.

It must be stressed that the initiative is not aimed at a harmonisation of patent law between the two countries. There are a number of issues which distinguish the Australian and New Zealand patent legislations. In fact, more distinctions may come when the proposed draft New Zealand patent legislation comes into effect.

Consequently, the integrated examination will inevitably result in the applications being examined separately under their own separate laws, albeit by the same person. The practical hurdle that needs to be addressed in order to implement the initiative will be to train the Australian and New Zealand patent examiners to confidently and competently be able to apply the laws of another country.

To the extent that there are certain overlaps in the patent legislation of Australia and New Zealand, given examination will be conducted by a single examiner, the initiative may well reduce duplication of work and provide a consistent expression of opinion. However, will these perceived benefits be negated or outweighed by the practical difficulties of the examiner applying the non-overlapping or distinguishing aspects of the two patent laws?

by Simon Ellis