New Zealand Institute of Patent Attorneys Inc

•

www.nzipa.org.nz

OPO Box 5116, Wellington 6011

24 March 2016

SUBMISSIONS ON THE PATENTS (TRANS-TASMAN PATENT ATTORNEYS AND OTHER MATTERS) AMENDMENT BILL

To the Commerce Committee

This submission is from the New Zealand Institute of Patent Attorneys (NZIPA), of PO Box 5116, Wellington, New Zealand. We wish to appear before the committee to speak on our submission. We can be contacted at the below contact details or by email at [email protected] .

Yours faithfully

Corinne Cole President

Matt Adams Councillor

Direct +64 4 498 3445 Mobile +64 21 440 495 Email [email protected]

Direct Mobile Email

0/8355906 1.docx

+64 4 498 3454 +64 21 463 738 [email protected]

NEW ZEALAND INSTITUTE OF PATENT ATTORNEYS INC. Submission to the Commerce Select Committee on the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (the Bill).

1. 1.1

About the New Zealand Institute of Patent Attorneys Inc. The New Zealand Institute of Patent Attorneys Inc (NZIPA) was established in 1912. It is an incorporated body representing most Patent Attorneys registered under the New Zealand Patents Act, and who are resident and practising in New Zealand. Current membership stands at approximately 288, made up as 151 Fellows, 44 Students, 15 Associates and 18 Overseas members.

1.2

The NZIPA is governed by a set of rules and a code of professional conduct to ensure its members maintain a consistent high standard of professionalism at all times.

1.3

A Council of 9 Fellow members is elected each year at the Annual General Meeting. They meet at least monthly throughout the year to manage the affairs of the NZIPA.

1.4

The Rules set out the objects of the NZIPA, which are as follows: •

To maintain a representative group of registered New Zealand patent attorneys.

•

To promote the interests of the Institute.

•

To assist in developing, promoting and maintaining the integrity of the laws and regulations relating to intellectual property matters.

•

To preserve and maintain the integrity and status of the patent attorney profession by setting and administering Rules and a Code of Professional Conduct.

•

To provide means to resolve differences between Members of the Institute, and between members of the public and Members of the Institute.

•

To arrange and promote opportunities to acquire and share knowledge about the patent attorney profession.

2. 2.1

The role of the patent attorney industry in boosting productivity Patent attorneys advise on all parts of Intellectual Property. ‘Intellectual property’ or ‘IP’ is the term used to describe rights in intangible things. Those rights can be registered (as in the case of patents, designs, trade marks or plant variety rights) or unregistered (as in the case of copyright, trade secrets, goodwill and reputation).

2.2

As a profession, Patent Attorneys operate in the global arena assisting New Zealand business to take their ideas and innovations to the world. We understand the need to be smart about intellectual property – protection is important and commercialisation more so. We provide real support to New Zealand’s innovators through identification and enhancement of ideas, protection and commercialisation.

2.3

NZIPA members have many touch points with their clients which enable them to easily detect relevant, marketable and commercial ideas. As a result of their engagement, patent attorneys: •

Regularly visit New Zealand businesses to enable early identification of innovative ideas;

•

Educate New Zealand businesses about the range and scope of those intellectual property rights both in New Zealand and overseas;

•

Occasionally take equity in New Zealand businesses to assist with the commercialisation of ideas and innovations that they see have potential and which may not otherwise get to market without our assistance;

•

Are actively involved in the commercialisation of ideas and innovations by sitting at the negotiation table, drafting and reviewing related documents and providing strategic, commercially relevant and pragmatic advice across a broad range of issues (i.e. commercial issues, not just those that are IP related); and

•

Develop strategies to protect those ideas and innovations in key markets through varied intellectual property rights.

2.4

Patent attorneys are a highly educated profession. Many of the registered patent attorneys in New Zealand are both legally (i.e. bachelor of laws or higher) and technically (i.e. Bachelor of Science or higher) qualified as well as being registered patent attorneys.

2

2.5

We work with New Zealand businesses across all sectors from fashion to telecommunications, and from wine to biotechnology. We are attuned to the opportunities and challenges which New Zealand businesses face both locally and internationally.

2.6

Our members are globally focussed. They travel regularly and are abreast of issues that will affect New Zealand businesses as they seek to commercialise their innovations and take them to the world.

2.7

Most importantly, patent attorneys have a unique insight into how New Zealand business can (and should) use the intellectual property systems in New Zealand, Australia and further afield to maximise commercial advantage on the world stage.

3.

Summary of Submission Amendment to grounds of opposition

3.1

NZIPA agrees with the amendment to section 92 of the Patents Act 2013 (the 2013 Act) to remove the right to oppose the grant of a patent on the ground that the claim(s) relate(s) to more than invention. However, NZIPA would like to see the amendment applied retrospectively. Single patent Application Process (SAP)

3.2

NZIPA believes that SAP should be suspended until the costs and benefits are better quantified. There has been no formal consultation to date on SAP. If formal consultation indicates that SAP would meet the stated objectives then the SAP can be implemented at a later date.

3.3

However, if it is intended to proceed with SAP, NZIPA believes use of SAP should be voluntary. Single patent Examination Process (SEP)

3.4

NZIPA believes that SEP should be suspended until the costs and benefits are better quantified. There has been no formal consultation to date on SEP. If formal consultation indicates that SEP would meet the stated objectives then the SEP can be implemented at a later date.

3.5

However, if it is intended to proceed with SEP, NZIPA believes use of SEP should be voluntary.

3

Joint registration regime with Australia for patent attorneys 3.6

NZIPA notes that consultation with the New Zealand profession has focussed solely on how a joint registration regime should be implemented rather than on whether or not a joint registration regime would benefit New Zealand business and/or the New Zealand patent attorney profession.

3.7

NZIPA is adamant that the regime must provide a level playing field if the intention of the regime is to increase the amount of competition beyond that already provided by the Trans-Tasman Mutual Recognition Act 1997 (TTMRA).

3.8

NZIPA believes the regime as proposed does not provide a level playing field. Patent attorney services

3.9

NZIPA agrees with the following proposed definitions: •

Patent attorney

•

Attorney

•

Patent attorney services

•

Registered patent attorney.

Other persons providing patent attorney services 3.10

NZIPA agrees with the wording of new section 273 that maintains the status quo for lawyers that are not patent attorneys.

3.11

NZIPA believes that new sections 277 and 278 should be expanded to permit lawyers and partners in partnerships to carry out patent work under supervision. The sections as worded permits only a subset of patent work to be carried out under supervision.

3.12

NZIPA does not otherwise support broadening the scope of patent attorney services that are able to be provided by persons who are not patent attorneys.

3.13

NZIPA believes the term ‘agent for obtaining patents’ is unclear. There is no definition for this term, or justification for its inclusion, anywhere else in the Bill. Changes to permitted business structures

4

3.14

NZIPA supports the amendment to permit a company to provide patent attorney services as long as the company is an incorporated patent attorney. NZIPA sees this amendment as merely maintaining the status quo.

3.15

NZIPA supports the amendment to permit mixed partnerships. Many of our members are required to maintain overlapping partnerships. The amendment will permit our members to adopt simpler business structures.

4. 4.1

Amendment to ground of opposition Clause 4 of the Bill amends section 92 of the Patents Act 2013 (the 2013 Act) to remove the right to oppose the grant of a patent on the ground that the claim or claims relate to more than one invention, and to bring the law back to the position under the Patents Act 1953 (the 1953 Act).

4.2

NZIPA agrees with this amendment to correct what is clearly a drafting error in the 2013 Act. The Explanatory Note acknowledges that ‘an issue has been identified with the grounds on which third parties can oppose the grant of a patent on an accepted patent application’. There was no policy intention to introduce lack of unity of invention as a ground of opposition in the 2013 Act. If this ground remains, patent applicants may be unfairly disadvantaged. The only way that patent applicants could deal with an opposition on this ground would be to amend the application so that patent protection is claimed for only one invention. The applicant would lose patent rights to the other invention(s).

4.3

NZIPA would like to see the amendment applied retrospectively, applying to all affected patent applications. NZIPA acknowledges that there might be a reluctance to put in place legislation that is retrospective.

4.4

NZIPA points out that section 252 of the Patents Act 2013 Act corrects a problem with Treaty applications that claim priority from a New Zealand patent application. Section 252(2) is carefully worded to take effect retrospectively, stating that ‘the claim to priority by the application is validated and must be taken to be, and always to have been, lawful to the extent that it would have been valid under the Patents Act 1953 if New Zealand had been a convention country for the purposes of that Act’.

4.5

NZIPA is not aware of any reason why the Clause 4 amendment cannot also be retrospective.

5

5. 5.1

Single patent application and examination process The Explanatory Note states that the Single patent Application Process (SAP) and the Single patent Examination Process (SEP) are part of the Single Economic Market patents programme. The SAP would be implemented by IPONZ and IP Australia establishing a single application portal on their Internet sites. Under SEP, where there are corresponding applications, both could be examined by the same patent examiner.

5.2

A Cabinet Committee paper1 relating to SAP And SEP (Cabinet Committee paper) states that they ‘will be optional processes, meaning that applicants could choose to file separate applications with IPONZ and IP Australia and have each application examined separately by IPONZ and IP Australia as they do now’ [para 5].

5.3

A Regulatory Impact Statement (RIS) prepared by MBIE for the various Cabinet Committee papers relating to SAP and SEP states that ‘the Ministry has not been able to fully quantify the costs and benefits of the SAP and SEP’. A Sapere report prepared for the Ministry of Economic Development (the predecessor to MBIE) concludes that ‘there are risks and potential costs from a business perspective’ to introducing SAP and SEP. The findings in the report were equivocal’2. SAP and SEP commencement timing

5.4

Clause 5 of the Bill inserts a new section 220A into the 2013 Act to allow the SAP and the SEP to operate in New Zealand. Clause 2(1) states that clause 5 is due to come into force on the day after the date on which the Bill receives the Royal assent.

5.5

The Cabinet Committee paper3 acknowledges that ‘[t]here has not been any formal public consultation process on SAP and SEP’ [para 57]. The paper also states that ‘[f]ormal consultation will be carried out as part of the select committee process for legislative changes required to enable the SAP and SEP to be implemented’ [para 59].

5.6

NZIPA has been advised that consultation by IPONZ on SAP and SEP is due to take place around May or June 2016. The feedback from this consultation could well lead to the SAP and SEP being shelved.

1

2

3

Cabinet Paper: Single Economic Market – Single Patent Application Process and Single Patent Examination Process Trans-Tasman harmonisation of intellectual property law regimes – the costs and benefits, Sapere Research Group Limited, 13 October 2011, p 1. Note 1 above.

6

5.7

NZIPA believes that the SAP and SEP amendment should be suspended until the costs and benefits of each are better quantified.

5.8

Suspension of SAP and SEP can be achieved by either: •

Removing clause 5 from the Bill; or

•

Amending clause 2(1) to state that clause 5 comes into force on a date appointed by the Governor-General by Order in Council.

5.9

NZIPA observes that the provisions equivalent to clause 5 of the Bill were split from the Patents Bill 2008 (that led to the 2013 Act) to enable the 2013 Act to proceed smoothly. NZIPA would like clause 5 removed from the Bill for the same reasons as those for which the equivalent provisions were removed from the 2013 Act.

5.10

The Cabinet Committee paper4 recommends ‘that the amendments [to introduce SAP and SEP] be progressed through the Patents (Trans-Tasman Patent Attorneys) Amendment Bill, which also implements a separate SEM outcome – the implementation of a single Trans-Tasman regulatory regime for patent attorneys’ [para 10].

5.11

If clause 5 is removed from the Bill, it can simply be added to a future Bill in the same way that it was added to the Patents (Trans-Tasman Patent Attorneys) Amendment Bill.

5.12

A less desirable alternative would be amending clause 2(1) to permit some flexibility on the timing of commencement of this part of the Bill. Objectives of SAP

5.13

The objectives set out in the Explanatory Note that are relevant to SAP appear to be: •

Reduction of time and resources spent by businesses applying for patents in both New Zealand and Australia; and

•

Minimising the administrative costs of running the patent regime.

5.14

NZIPA believes that the benefits of SAP have not been quantified.

5.15

The Explanatory Note states that the SAP would be implemented by IPONZ and IP Australia establishing a single application portal on their Internet sites.

4

Note 1 above.

7

Applicants wishing to apply for a patent for the same invention in both countries could visit either portal. Once there, applicants would file one set of documents and pay one fee. Once all the required information has been provided, the portal would generate two applications. As a result, applicants would have to provide information relating to the two applications only once, rather than having to do it twice, as at present. 5.16

At best the identified benefits appear to be 'back of the envelope' calculations with little consideration given to whether there would be significant uptake of SAP, instead relying on a pilot (at cost) to determine whether or not the process is worthwhile. Specifically, the Cabinet Committee paper5 states that: ‘Applicants will save approximately 15-30 minutes for each pair of corresponding applications as they will only have to provide information relating to both applications in a single transaction, rather than providing the information twice, as at present’ [para 20].

5.17

Under the present system, most applicants wishing to apply for a patent for the same invention provide all the required information to their patent attorney. The patent attorney provides this information to IP Australia and IPONZ and pays the filing fees. The patent attorney creates two separate records in a file management database, one for each application. IP Australia creates a record for the Australian application. IPONZ creates a record for the New Zealand application.

5.18

Under the proposed system most applicants will continue to provide all the required information to their patent attorney. The patent attorney will provide this information to either IP Australia or IPONZ and pays the filing fees. The selected Office will provide the information to the other office. The patent attorney will create two separate records in a file management database, one for each application. IP Australia will create a record for the Australian application. IPONZ will create a record for the New Zealand application.

5.19

The present and proposed processes are nearly identical. With the exception that IPONZ and IP Australia must each invest additional resources setting up and maintaining a portal to receive SAP applications. NZIPA does not believe the SAP portal will reduce time and resources.

5.20

The Cabinet Committee paper6 states that ‘SAP costs will be recovered through patent fees. The fees are currently subject to review as part of the implementing

5 6

Note 1 above. Note 1 above.

8

the Patents Act 2013 (2013 Act) and are expected to increase in line with the high examination stands required under the 2013 Act’ [para 23]. 5.21

NZIPA observes that the 2013 Act is already in force and that fees have already been set with no consideration of implementation of SAP. One assertion is that it is unclear whether the fees would further increase or decrease as a result of SAP and SEP. NZIPA suggest that fees would need to increase beyond present levels to recover the costs of SAP.

5.22

Duplication of effort is not a new issue. The Patent Cooperation Treaty (PCT) was established in 1978 as an attempt to reduce duplication and to streamline application processes. Under this treaty an applicant can file a single international patent application covering all 148 member states. At the end of a defined period the applicant must convert the international application into a national application in each country where the applicant wishes a patent to issue. A flow chart showing the PCT process is included at the end of this submission.

5.23

The ePCT system offered by the World Intellectual Property Organisation (WIPO) provides secure electronic access to the files of international applications filed under the ePCT as maintained by the International Bureau.

5.24

There is a proposal to use ePCT to trigger national phase entry. The process would receive information already supplied to WIPO. The applicant does not need to provide this information again.

5.25

The use of ePCT for converting the international application into a national application in each country was not contemplated when the SAP was first proposed. NZIPA believes that ePCT will be more useful to New Zealand business than the SAP. Under the SAP the applicant is providing information to the single application portal that the applicant has already provided to WIPO. Under the ePCT the applicant does not need to provide this information a second time. The applicant merely selects the countries of interest.

5.26

NZIPA believes that New Zealand business can more effectively reduce time and resources applying for patents in both New Zealand and Australia by using ePCT rather than the SAP.

5.27

The Cabinet Paper7 states that ‘[t]he nature of the patent system is such that the two applications must be filed around the same time. Because the application processes are similar there is potentially avoidable duplication for applicants and patent attorneys’ [para 17].

7

Note 1 above.

9

5.28

Where a New Zealand business files a patent application in Australia, it is likely to be filing in other countries as well at the same time. New Zealand applicants tend to file an initial patent application in New Zealand, followed by either a PCT application or individual country applications within a 12 month deadline. Where a New Zealand business files in both New Zealand and Australia at the same time it is usually doing so via PCT national phase. PCT national phase is itself a streamlined and efficient process. It is unclear what benefit the SAP process could add to New Zealand businesses.

5.29

While the benefits to New Zealand business should be the primary consideration, NZIPA believes that IPONZ can more effectively minimise the administrative costs of running the patent regime by adopting the ePCT system rather than developing and maintaining the SAP.

5.30

The SAP is lauded by government officials as having significant benefit to New Zealand business. We encourage select committee members to ask officials from the Ministry of Business Innovation and Employment, The Treasury and the Intellectual Property Office of New Zealand (IPONZ) what these benefits might be, and how they aim to quantify the costs and benefits of such a move. We also encourage the select committee to ask what motivated the SAP proposal. Objectives of SEP

5.31

The objectives set out in the Explanatory Note that are relevant to SEP are as follows: •

Reduction of time and resources spent by businesses obtaining patents in both New Zealand and Australia

•

Minimising the administrative costs of running the patent regime

•

Ensuring patents granted in Australia and New Zealand are of a similar, high-quality standard

•

Ensuring examination approaches are consistent between Australia and New Zealand.

5.32

NZIPA believes that the benefits of SEP have not been quantified. NZIPA has not been able to obtain any evidence that implementing SEP will meet these objectives, or even that these objectives are relevant to New Zealand business.

5.33

The Explanatory Note states that corresponding applications could be examined by the same patent examiner under SEP. Corresponding applications examined

10

under the SEP would be examined according to the law and practice of the country for which the application is filed. The examiner could be in either New Zealand or Australia, and the examiner would produce a single combined examination report covering both applications. 5.34

The Explanatory note acknowledges that there are significant differences between Australia and New Zealand in the criteria for granting a patent. But then states that much of the procedure for examining the two patent applications is the same and that there is a significant degree of duplication of work between IPONZ and IP Australia in examining corresponding applications. There is an assertion that this duplication of work increases costs and complexity for applicants, but there is no evidence provided to support this assertion.

5.35

The SEP is lauded by government officials as having significant benefit to New Zealand business. We encourage select committee members to ask officials from the Ministry of Business Innovation and Employment, The Treasury and the Intellectual Property Office of New Zealand (IPONZ) what these benefits might be, and how they aim to quantify the costs and benefits of such a move. We also encourage the select committee to ask what motivated the SEP proposal.

5.36

The Cabinet Committee paper8 suggests a benefit of SEP is that ‘IPONZ would also benefit from shared expertise as it will need to expand and up-skill its patent examiner workforce to implement the 2013 Act. The 2013 Act imposes stricter examination standards and will require greater resources and expertise. The SEP will enable IPONZ to leverage off the existing expertise and experience of Australian examiners’ [para 30].

5.37

NZIPA observes that the 2013 Act is already in force. IPONZ is already working with IP Australia to up-skill its patent examiner workforce. IPONZ is already leveraging of the existing expertise and experience of Australian examiners. NZIPA does not see what SEP will add to the existing training programme.

5.38

A further area of concern is the removal of applicant choice. The Explanatory note states that ‘entry to SEP could be compulsory, with the applicant being given no choice in the matter. IPONZ and IP Australia could identify pairs of corresponding applications that could be examined under the SEP, and these applications will be examined under the SEP’.

5.39

All other papers relating to SEP have indicated that SEP will be voluntary. NZIPA maintains that SEP (as well as SAP) should be voluntary.

8

Note 1 above.

11

Reduction of time and resources spent by businesses obtaining patents in both New Zealand and Australia 5.40

The Sapere report "Trans-Tasman harmonisation of intellectual property law regimes - costs and benefits" was prepared for the Ministry of Economic Development in October 2011 and is the most definitive assessment available of the costs and benefits of SAP, SEP and joint regulation. It is concerning that their main findings in relation to SEP were that: ‘The Ministry has strong policy grounds to pursue this initiative, but there are risks and potential costs from a business perspective. Our findings are therefore equivocal’9. ‘There is some risk to business from the proposal. IPONZ currently examines patent applications much more quickly than IP Australia. The time to examine is expected to increase with the new test. It is not known by how much. A single examination model would mean that IPONZ and IP Australia’s time to examine would equalise’10. ‘From a business perspective, the key is they are able to control the speed at which the patent is granted. So the loss of the ability to prosecute patents quickly in New Zealand, if that is what the applicant wants, could be a significant disbenefit. A patent granted is commercially much more valuable than a patent pending. A delay would only have to cost New Zealand businesses applying for a patent an average of $540 to outweigh the benefit of reduced filing and maintenance costs. We see this possible costs as a risk; one that could outweigh the minor benefits if it were to happen11’.

5.41

The Regulatory Impact Statement prepared by MBIE for the various Cabinet Committee papers relating to SEP says: ‘An initial SEP pilot program will be run to further quantify the costs and benefits to determine how best to implement the SEP. Cabinet approval will be sought on a decision whether to fully implement the SEP. Legislative change is required to enable a pilot program to be implemented’.

5.42

The cost to New Zealand business is therefore likely to increase under SEP.

9

Trans-Tasman harmonisation of intellectual property law regimes – the costs and benefits, Sapere Research Group Limited, 13 October 2011, p 1. 10 Trans-Tasman harmonisation of intellectual property law regimes – the costs and benefits, Sapere Research Group Limited, 13 October 2011, p 3. 11 Trans-Tasman harmonisation of intellectual property law regimes – the costs and benefits, Sapere Research Group Limited, 13 October 2011, p 3.

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5.43

There are significant differences between the patent regimes of Australia and New Zealand. These differences are not only in the criteria for granting a patent. There are also administrative differences in which Australia and New Zealand apply different approaches even with similar law.

5.44

5.45

These differences include: •

Time limits and procedures for handling divisional applications

•

Differences in fees for excess claims

•

Statutory subject matter exclusions

•

Requirement for voluntary amendment fees.

Many pairs of applications will still need to be handled separately. Even if the applicant wishes to proceed with both applications at the same time (which is not always the case), a combined examination report setting out the issues relevant to each application would not reduce the time and resources spent by businesses obtaining patents in both New Zealand and Australia. In many cases it will take the same amount of time to reply, in some cases more, to a combined examination report as it would to reply to two separate examination reports. Minimising the administrative costs of running the patent regime

5.46

Corresponding applications examined under the SEP will be examined according to the law and practice of the country for which the application is filed. This means that examiner’s in each country will be required to learn two sets of laws and procedures. As noted above in paragraph 5.43 and 5.44, there are significant differences between the laws of the two countries.

5.47

A Cabinet Committee paper12 relating to SAP and SEP acknowledges that ‘[i]t is not possible to accurately predict the likely time savings but this could be a few hours for each pair of applications. Whilst this will reduce the time and resources required to examine corresponding applications across Australia and New Zealand, the magnitude of the reduction is not expected to be significant for IPONZ’ [para 32].

5.48

NZIPA is concerned that MBIE has not considered the potential additional costs of rolling out SEP. These additional costs include increased compliance costs for New Zealand business and their patent attorneys.

12

Note 1 above.

13

5.49

Further costs include the costs to train all examiners to a level of competency and familiarity with each country’s laws and practices. A Cabinet Committee paper relating to SAP and SEP acknowledges that ‘IPONZ’s examination workload will increase as a result of the 2013 Act coming into force and there is potential for it to also increase as a result of the SEP. IPONZ will increase its examination resources to manage the increased workload if appropriate’ [para 34].

5.50

NZIPA member firms observe that finding, recruiting, training and maintaining skilled staff in New Zealand is a challenge. IPONZ is likely to encounter the same challenges should it need to increase its examination resources.

5.51

It is not clear whether it is MBIE or New Zealand business who will cover this additional cost. There is no suggestion that the fees IPONZ charges applicants will decrease under SEP. It is likely that patent attorney fees will increase. NZIPA is unclear how increasing costs will assist in building better New Zealand businesses or a stronger innovative business environment. Ensuring patents granted in Australia and New Zealand are of a similar, highquality standard

5.52

There are many initiatives already underway that seek to enhance patent quality. Most of these involve examiners’ in Australia or New Zealand having access to the results of searching and examination performed by foreign patent offices. Time taken for examination work can be reduced and quality of search results can be improved by sharing information.

5.53

Many applicants who file patent applications in New Zealand are simultaneously pursuing corresponding patent applications in Australia, the United States, Europe and Japan.

5.54

Applicants who use the PCT route have their PCT application examined by an examining authority under eligibility criteria common to most patent laws. A flow chart showing the PCT process is included at the end of this submission. One of the purposes of the PCT system is to reduce duplication.

5.55

The WIPO CASE system, for example, enables patent offices to securely share search and examination documents related to patent applications. IP Australia and IPONZ are both participating Offices. This means that each Office carries out further search and examination only if deemed necessary after analysing existing information of any equivalent filing at another participating Office.

5.56

A New Zealand examiner or Australian examiner will often have available to him or her the prior art search and conclusions of the international examination

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report. It is not uncommon for an examiner in either country to refer simply to objections raised in the examination report prepared by the PCT examining authority. 5.57

New Zealand examiners operating under the 2013 Act routinely impose on the applicant a requirement to provide the examiner with the results of documentary searches performed by foreign patent offices.

5.58

Australian examiners routinely check the progress of corresponding applications outside Australia. It is not uncommon for applicants to receive an Australian patent examination report that has attached to it an examination report that issued on a corresponding US application. The Australian examination report contains a statement that the Australian examiner agrees with the US examiner.

5.59

Another example of Australian examiners monitoring the work of other offices is demonstrated in the ‘Pre-Examination Processing Notices’ issued by IP Australia. The Notice highlights to the applicant the results of search and/or examination reports issued on corresponding applications that are known to IP Australia. The Notice invites the applicant to file observations and/or amendments.

5.60

IP Australia is a member of the Global Patent Prosecution Highway (GPPH) initiative. The initiative is described on the IP Australia website as ‘part of our continued focus on strengthening international cooperation between overseas patent offices and ensuring maximum work-sharing potential’. Under the GPPH scheme, an applicant receiving a ruling from one of the twenty participating National patent offices that at least one claim in a national application is allowable, could request IP Australia to fast track the examination of a corresponding Australian application.

5.61

Global Dossier is another initiative that is gaining traction internationally. Global Dossier was set up under an agreement between several countries to promote a shared approach and reduce duplication of effort. An IP5 Global Dossier Task Force has been working on providing tools that allow applicants and examiners to retrieve information about patents at an IP5 level (for example dossier content of an entire family of applications from a single source) and to develop approaches to allow simplified subsequent filing of applications at other IP5 Offices.

5.62

The above initiatives have the potential to ensure patent quality by providing the examiner with all the information needed to conduct high quality examination. There is the added benefit of reduced administrative costs because searching is not being duplicated. There is less need for examiners to collaborate specifically between New Zealand and Australia as the required information is available via

15

these existing and emerging systems. It is not clear what additional benefits will be gained by the SEP. Ensuring examination approaches are consistent between Australia and New Zealand 5.63

Examination approaches are inconsistent between Australia and New Zealand. These appear to arise from policy decisions within each Office. These policy decisions are expressed in documents that are available to each Office. There appears to be little attempt to take a consistent approach, even though each office knows about the examination approaches of the other.

5.64

There is a lack of consistency in case load management. In both New Zealand and Australia it is necessary to request examination within a five year period, or within two months of receiving a direction to request examination. IPONZ and IP Australia use this mechanism to manage their own workloads. They issue directions when they are ready to examine more cases. There appears to be little coordination on when the two Offices issue directions on a pair of cases.

5.65

There is a lack of consistency in examination deadline management. In both countries an application must be accepted within 12 months of the first examination report. IPONZ however imposes a further deadline on the applicant to respond to a first examination report within six months (extendible by one month). If the applicant in New Zealand does not respond within this deadline the New Zealand application lapses. IP Australia does not impose this six month deadline on Australian applications.

5.66

There is a lack of consistency in the objections that are raised. In both countries the applicant is required to file an abstract. An abstract is essentially a summary of a patent specification. IPONZ has quite specific requirements for the format of the abstract. IP Australia does not have these same requirements. IPONZ frequently objects to abstracts that IP Australia does not. The result of this is increased compliance costs for New Zealand applicants and their patent attorneys. This inconsistency appears to be an arbitrary policy decision as both countries adopted the same provisions regarding abstracts from the PCT rules.

5.67

There are many other areas of inconsistency. It is not clear how assigning a pair of patent applications to a single examiner will ensure consistency when there appears to be little attempt to ensure consistency at a policy level between the two Offices.

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6. 6.1

Joint registration regime with Australia for patent attorneys The Explanatory note states that ‘[i]n August 2009, Prime Ministers Key and Rudd endorsed the development of a single trans-Tasman regulatory framework for patent attorneys as one of the intellectual property outcomes for the single Economic Market agenda. In November 2011, Cabinet agreed that New Zealand and Australian patent attorneys are to be regulated under a single trans-Tasman regulatory framework in order to reduce registration costs for, and to promote competition between, New Zealand and Australian patent attorneys’.

6.2

Clause 6 of the Bill inserts a new Part 6 into the 2013 Act to give effect to a single joint regulatory framework for patent attorneys to register and practice between Australia and New Zealand. A single governance body will be responsible for patent attorney registration, training, and disciplinary standards across Australia and New Zealand. The Bill implements the Arrangement between the Government of Australia and New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys (the patent attorney bilateral arrangement). Providing a level playing field

6.3

NZIPA notes that consultation with the New Zealand profession has focussed solely on how a joint registration regime should be implemented rather than on whether or not a joint registration regime would benefit New Zealand business and/or the New Zealand patent attorney profession.

6.4

New Zealand patent attorneys are comfortable with competition as they compete with Australia in the current environment. New Zealand patent attorneys have competed with their Australian counterparts since introduction of the TransTasman Mutual Recognition Act 1997 (TTMRA). The TTMRA has applied to registered patent attorneys in New Zealand and Australia since 1997. Registered patent attorneys in both countries have the right to apply for registration in the other jurisdiction.

6.5

If the intention is to increase the amount of competition beyond that already provided by the TTMRA, the NZIPA is adamant that the Bill must provide a level playing field. New Zealand patent attorneys must be able to continue competing effectively with their Australian counterpart to enable the profession to survive in New Zealand.

6.6

NZIPA believes the Bill does not create a level playing field. Some of the areas of concern are as follows:

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•

No accredited course of study in New Zealand

•

Differences in professional qualifications

•

The transitional provisions disadvantage trainees

•

No real recognition of the New Zealand patent attorneys who specialise in trade mark work

Accredited course of study 6.7

Under the joint registration regime all trainee patent attorneys must complete an accredited course of study. There is no accredited course offered in New Zealand right now. There is not expected to be any accredited course of study offered in New Zealand in 2017 when the joint registration regime comes into force.

6.8

New Zealand residents will be required to enrol in an accredited course of study offered by an Australian University. There is a risk that New Zealand residents will not be eligible for the same fee assistance schemes and student loans as their Australian counterparts. In some cases, there is a risk they will be treated as international students with resulting higher course fees.

6.9

The costs of becoming a patent attorney will therefore be greater for New Zealand residents than for Australian resident patent attorneys. Differences in professional qualifications

6.10

Under the joint registration regime residents of both New Zealand and Australia will undertake an equivalent accredited course of study.

6.11

NZIPA understands that part of the accredited course of study will qualify a trainee as an Australian trade marks attorney. Those trainees who wish to qualify also as patent attorneys complete the remainder of the accredited course of study.

6.12

There is no New Zealand equivalent to the Australian trade marks attorney qualification. Neither the Bill nor the patent attorney bilateral arrangement contemplate the creation of a “New Zealand trade marks attorney”. This is a significant disadvantage to New Zealand legal advisors who specialise in trade marks.

6.13

NZIPA believes that equivalent qualifications should be available in both countries.

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Transitional provisions 6.14

Schedule 1 of the Bill ensures that persons registered as a patent attorney under the 1953 Act at the date of entry into effect of the patent attorney bilateral arrangement are deemed to be registered as a patent attorney under the joint registration regime.

6.15

Clause 8.1 of the patent attorney bilateral arrangement permits a person already registered as a patent attorney under the 1953 Act who has sufficient competency in trade marks law and practice to be registered as an Australian Trade Mark Attorney.

6.16

NZIPA supports both of these ‘grand-parenting’ provisions in concept.

6.17

NZIPA is however concerned with the criteria set out in paragraph 8.1 of the patent attorney bilateral arrangement. The arrangement requires a registered patent attorney to establish ‘to the satisfaction of the Designated Manager that he or she has a level of competency in trade marks law and practice that is sufficient to warrant the individual becoming a ‘registered trade mark attorney’. The level of competency required is unclear. Furthermore, there is a question as to whether a grand-parenting provision should impose this additional requirement on New Zealand patent attorneys that is not imposed on their Australian counterparts.

6.18

NZIPA is also concerned with the treatment of New Zealand residents who have not yet passed all the papers required to qualify as a patent attorney. We accept that there needs to be some time limit to the transitional provisions. Therefore it seems reasonable to require all trainees to pass all the prescribed papers within four years of the commencement of the joint registration regime.

6.19

NZIPA understands that the current structure in which exams are set and marked by NZIPA and IPONZ will continue during the four year transition period, and that no accreditation is required for them to do this.

6.20

NZIPA is concerned with an arbitrary time limit imposed on New Zealand patent attorneys who specialise in trade mark work. Registered patent attorneys will have only one year from the commencement of the joint registration regime to register as Australian trade marks attorneys.

6.21

Some New Zealand resident trainees who are currently undergoing the registration process will not be qualified in time to register as Australian trade marks attorneys if only a one year period is established. NZIPA believes that this arrangement does not provide a level playing field.

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6.22

One suggestion is that the one-year period to register as an Australian trade marks attorney extends from the date a trainee qualifies as a patent attorney rather than from the date of commencement of the joint registration scheme.

6.23

There were only 78 trainees sitting a total of 141 exams in New Zealand last year. Some of these trainees have now passed all the papers and are patent attorneys. Some of these trainees will not pass all the prescribed papers within the four year transitional period. The number of trainees likely to be grandparented on to the Australian trade mark attorney register is therefore a negligible and finite number. There is no downside to granting to these trainees a one-year period from the date they qualify as a patent attorney.

7. 7.1

Patent attorney services The Bill defines ‘patent attorney’ and ‘attorney’ as ‘an individual or a company that: a) carries on business in New Zealand or Australia or both; and b) undertakes patent attorney services’.

7.2

‘Patent attorney services’ is defined as ‘the undertaking of any of the following services in Australia or New Zealand, or both, for gain: a) applying for or obtaining a patent in Australia or New Zealand or elsewhere on behalf of another person; and b) preparing or amending specifications or other documents for the purposes of the patent law of Australia, New Zealand, or any other country on behalf of another person; and c) giving advice (other than of a scientific or technical nature) as to the validity of patents or their infringement’.

7.3

A ‘registered patent attorney’ is defined as ‘an individual or a company that is registered as a patent attorney under the joint registration regime.

7.4

NZIPA agrees with the proposed definitions of ‘patent attorney’, ‘registered patent attorney’, and ‘patent attorney services’.

7.5

NZIPA agrees with the new definition of ‘attorney’. In New Zealand legal advisors who are lawyers are referred to as ‘lawyers’ rather than ‘attorneys’. The term

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‘attorney’ is more readily used to describe a legal advisor who provides patent attorney services and should be defined as such.

8. 8.1

Effect of Bill on other persons providing patent attorney services The Bill states that ‘[a] person providing patent attorney services must be registered under, and comply with, the joint registration regime’. The Bill contemplates that patent attorney services can be provided by an individual, a company or a partnership. These alternative business structures are described in more detail below.

8.2

NZIPA understands the intent of this restriction is that only registered patent attorneys are able to provide patent attorney services in the three areas set out above namely: a) applying for or obtaining patents on behalf of another person; b) preparing or amending specifications or other documents; and c) giving advice as to the validity of patents or their infringement.

8.3

NZIPA supports this restriction as it goes some way to ensuring that New Zealand business receives good advice from appropriately trained and qualified professionals. Lawyers

8.4

New section 273 maintains the status quo for lawyers that are not patent attorneys. Lawyers are not prohibited ‘from taking part in proceedings under the Patents Act 2013 to the extent that they were entitled to do so before the commencement of this Part’.

8.5

New section 277(1) clarifies that lawyers may not draft patent specifications or amend specifications unless the lawyer is a registered patent attorney, acting under the instruction of a registered patent attorney, or directed to do so by a Court of New Zealand or elsewhere. The specific restriction involves preparing ‘a specification or a document relating to an amendment of a specification’.

8.6

Our reading of sections 273 and 277(1) is that lawyers who are not patent attorneys are permitted to prepare documents other than patent specifications to the extent that lawyers are already entitled to do so under the 2013 Act.

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8.7

It is not clear to NZIPA why new section 277 only deals with a subset of patent attorney services. NZIPA believes the section should clarify that lawyers cannot carry out ‘patent work’ unless the lawyer is also a registered patent attorney, acting under the instruction of a registered patent attorney, or directed to do so by a court of New Zealand or elsewhere. ‘Patent work’ itself is defined as: a)

applying for or obtaining patents in New Zealand or anywhere else

b)

preparing specifications or other documents for the purposes of this Act or the patent law of another country

c)

giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents,

8.8

New section 278 appears similar to section 277 in that it places restrictions on a partner who is not a registered patent attorney on preparing or amending patent specifications. NZIPA believes this section should be amended in the same way as section 277 set out above in paragraph 8.7.

8.9

NZIPA supports the status quo that lawyers who are not registered patent attorneys can provide limited patent attorney services to the extent that they were entitled to provide such services under the 2013 Act.

8.10

NZIPA does not support broadening the scope of patent attorney services that are able to be provided by lawyers who are not patent attorneys.

8.11

New section 274 sets out offences for unregistered persons practising as patent attorneys. Some of these provisions involve lawyers. For example: •

Section 274(1) – an individual commits an offence for carrying on business as a patent attorney if the individual is not a registered patent attorney or a lawyer.

•

Section 274(3) – a company commits an offence for carrying on business as a patent attorney if the company is not a registered patent attorney or an incorporated law firm.

•

Section 274(5) – a partner in a partnership commits an offence if the partner carries on business as a patent attorney and none of the partners in the partnership is a registered patent attorney or a lawyer.

•

Section 274(6) – a partner in a partnership commits an offence if the partner describes the partnership as a patent attorney and none of the partners in the partnership is a registered patent attorney or a lawyer.

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8.12

NZIPA understands that the references to ‘lawyer’ and ‘incorporated law firm’ are simply intended to recognise that limited patent attorney services are provided by lawyers who are not patent attorneys.

8.13

On the other hand, NZIPA objects if the intent of these sections is to permit lawyers who are not patent attorneys to provide patent attorney services beyond what they are permitted to do under the 2013 Act. In this case NZIPA encourages select committee members to ask officials how this would benefit New Zealand business. Agents for obtaining patents

8.14

The Bill introduces a new term ‘agent for obtaining patents’. This term appears only in new offences section 274. There is no definition for this term elsewhere in the Bill. For example: •

Section 274(2) - an individual commits an offence for describing himself or herself as an agent for obtaining patents if the individual is not a registered patent attorney.

•

Section 274(4) - a company commits an offence for describing itself as an agent for obtaining patents if the company is not a registered patent attorney.

•

Section 274(6) - a partner in a partnership commits an offence if the partner describes the partnership as an agent for obtaining patents if none of the partners in the partnership is a registered patent attorney or a lawyer.

•

Section 274(8) – a limited partnership commits an offence if the limited partnership describes itself as an agent for obtaining patents.

8.15

NZIPA encourages select committee members to ask officials which patent attorney services an ‘agent for obtaining patents’ would offer. Patent attorney services include applying for or obtaining patents on behalf of another person, and preparing or amending patent specifications. These services must be performed by a registered patent attorney. Anybody who offers these services is holding themselves out as a patent attorney.

8.16

NZIPA suggests that the term ‘agent for obtaining patents’ be removed from new section 274.

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9. 9.1

Changes to permitted business structures The Bill provides some flexibility in the business structures through which patent attorneys are permitted to provide patent attorney services.

9.2

NZIPA supports these changes for the following reasons: •

the changes promote competition which benefit New Zealand business

•

the changes enable New Zealand resident patent attorneys to compete on more level playing field with Australian resident patent attorneys

•

the changes provide New Zealand resident patent attorneys with the same options to manage succession planning and retention of senior staff as their Australian counterparts. Retention of skilled legal advisors is a benefit to New Zealand business.

Incorporated patent attorneys 9.3

The Bill provides that a company may provide patent attorney services as long as the company is an incorporated patent attorney. The Bill defines an ‘incorporated patent attorney’ as a ‘company that is registered as a patent attorney’. An ‘incorporated patent attorney’ must have at least one patent attorney director.

9.4

‘Incorporated patent attorneys’ are already permitted under the 1953 Act. They are defined as a company that carries on business as a patent attorney.

9.5

NZIPA believes that amending the 2013 Act merely maintains the status quo. Mixed business structures

9.6

Under the joint registration regime the following business structures will now be permitted to provide patent attorney services: •

a partnership where not all partners are patent attorneys

•

a company where not all directors are patent attorneys.

9.7

Mixed partnerships were not permitted under the 1953 Act.

9.8

The Bill permits partnerships (other than limited partnerships) to provide patent attorney services as long as at least one member of the partnership is a registered patent attorney.

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9.9

NZIPA supports this change. Many of our members are required to maintain overlapping partnerships of partners who are patent attorneys and those who are not patent attorneys. Amending the 2013 Act to permit partnerships of patent attorneys and non-patent attorneys will enable our members to adopt simpler business structures. This will provide the same options to New Zealand resident patent attorneys as their Australian counterparts.

9.10

Companies where not all directors are patent attorneys are already permitted under the 1953 Act. Section 103(2) requires a manager or director of the company to be registered as a patent attorney. The amendment to the 2013 Act therefore maintains the status quo for companies. Not every director of a company providing patent attorney services needs to be a registered patent attorney.

9.11

NZIPA supports new section 279. This section places restrictions on an employee or a member of an incorporated patent attorney on preparing or amending patent specifications. Such people must do so under the instructions or supervision of a registered patent attorney.

10.

Schedule 2 – Amendments to enactments Patent attorney privilege

10.1

The Evidence Act 2006 extends legal privilege to legal advisers and overseas practitioners.

10.2

NZIPA believes that amendments are required to the Evidence Act 2006 and that these amendments have been omitted in error from the Bill.

10.3

NZIPA suggest the following changes to the Evidence Act 2006: 10.3.1 Amend section 51 to add a definition of patent attorney, for example ‘patent attorney has the same meaning as registered patent attorney in Part 6 of the Patents Act 2013’. Schedule 2 proposes a similar definition of patent attorney to be inserted into the Lawyers and Conveyancers Act 2006. 10.3.2 Amend the definition of overseas practitioner in section 51 to remove the wording ‘(b) a person who is entitled to practise in Australia as a registered patent attorney or as a registered trade marks attorney’. The current wording of the section appears inconsistent with the intention of the Bill to

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provide a joint registration regime for patent attorneys in Australia and New Zealand.

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