Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill

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Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill

Government Bill

83—1

Explanatory note

General policy statement

This Bill proposes 3 main things—

  • an amendment to the grounds on which a person can oppose the grant of a patent under the Patents Act 2013:

  • a single patent application process and single patent examination process with Australia:

  • a joint registration regime with Australia for patent attorneys.

Amendment to grounds of opposition

Since the Patents Act 2013 entered into force, an issue has been identified with the grounds on which third parties can oppose the grant of a patent on an accepted patent application. As enacted, the Patents Act 2013 allows a grant of a patent to be opposed on the ground that an accepted patent application claims patent protection for more than 1 invention (“lack of unity of invention”). This issue was not a ground of opposition under the Patents Act 1953, which was replaced by the Patents Act 2013. There was no policy intention to introduce lack of unity of invention as a ground of opposition in the Patents Act 2013. 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 1 invention. The applicant would lose patent rights to the other invention or inventions. Under the Patents Act 2013, patents can only be granted for a single invention. However, if a granted patent is found to claim rights in more than 1 invention, the validity of the patent cannot be challenged on this ground. To address this issue, it is proposed to amend section 92(1) to explicitly exclude lack of unity of invention as a ground of opposition.

Single patent application process and single patent examination process with Australia

Since the Patents Act 2013 entered into force, the documentation that must be provided for both Australian and New Zealand patent applications is essentially the same. The criteria for granting a patent are now similar to those in Australia, but there are some significant differences.

Much of the procedure for examining the 2 patent applications is the same. There is a significant degree of duplication of work between the Intellectual Property Office of New Zealand (IPONZ) and the Australian Patent Office (IP Australia) in examining corresponding applications. About 95% of the patent applications filed in New Zealand have a corresponding application filed in Australia.

This duplication of work increases costs and complexity for applicants, IPONZ, and IP Australia. Two initiatives have been proposed that go some way towards addressing this issue—

  • a single patent application process (SAP):

  • a single patent examination process (SEP).

The SAP and 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. Applicants wishing to apply for a patent for the same invention in both countries could visit either portal. Once there, applicants would file 1 set of documents and pay 1 fee. Once all the required information has been provided, the portal would generate 2 applications, a New Zealand application, which would be sent to IPONZ, and an Australian application, which would be sent to IP Australia, for further processing. As a result, applicants would have to provide information relating to the 2 applications only once, rather than having to do it twice, as at present. Applicants would not have to use the SAP, and the existing mechanisms for filing patent applications in Australia and New Zealand would remain in place.

Under the SEP, where there are corresponding applications, both could be examined by the same patent examiner. Corresponding applications examined 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. Entry to the SEP is voluntary, so that patent applications would only enter the SEP if the applicant requested it or otherwise consented. Applicants could indicate their willingness to enter the SEP by ticking a box when filing an application or requesting examination of their application. Alternatively, 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 would be examined under the SEP.

The SEP would end when the fate of the 2 applications has been determined (accepted or refused). All processes following acceptance or refusal of an application, including the grant of a patent, would be handled in the country for which the application was filed. There would be 2 separate patents granted, 1 for New Zealand and 1 for Australia.

The objectives of the SAP and SEP are as follows:

  • reduction of time and resources spent by businesses applying for and 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.

The SAP and SEP will improve efficiencies through joint processes and shared resources and will increase the robustness of patent examination. Single examination will make it easier for IPONZ to manage the increased workload resulting from the new and higher examination standards required by the Patents Act 2013 (as compared with the Patents Act 1953).

The SAP and SEP will be implemented in the Patents Act 2013 and regulations. The Bill will amend the Patents Act 2013 to—

  • enable the Commissioner of Patents to delegate his or her statutory powers to personnel of IP Australia:

  • enable regulations to be made allowing the Commissioner of Patents to receive Australian applications and associated documents, together with the appropriate fees, on behalf of IP Australia:

  • enable regulations to prescribe that certain documents and fees relating to New Zealand patent applications filed with IP Australia are deemed to have been filed and received with IPONZ.

Joint registration regime with Australia for patent attorneys

Patent attorneys in New Zealand make up a small profession who provide specialist advice to businesses on obtaining and protecting intellectual property, especially on obtaining patents and registering trademarks. There are approximately 199 registered patent attorneys domiciled in New Zealand and 769 domiciled in Australia. Australia and New Zealand each currently maintain independent, but similar, registration regimes for patent attorneys. The majority of Australian and New Zealand patent attorneys are currently registered to practise in both Australia and New Zealand pursuant to the Trans-Tasman Mutual Recognition Act 1997.

In 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.

The single trans-Tasman regulatory framework contains the following key features:

  • a single trans-Tasman register for patent attorneys:

  • a single definition of patent attorney services that may only be performed by a registered patent attorney:

  • a trans-Tasman governance body, comprising Australian and New Zealand members, responsible for educating and disciplining patent attorneys:

  • a single trans-Tasman disciplinary regime, including a single code of conduct with which Australian and New Zealand patent attorneys must comply and a trans-Tasman disciplinary tribunal to determine complaints about patent attorneys and, where appropriate, discipline patent attorneys.

Departmental disclosure statement

The Ministry of Business, Innovation, and Employment is required to prepare a disclosure statement to assist with the scrutiny of this Bill. It provides access to information about the policy development of the Bill and identifies any significant or unusual legislative features of the Bill.

Clause by clause analysis

Clause 1 is the Title clause.

Clause 2 relates to commencement.

Part 1 comes into force on the day after the Bill receives the Royal assent.

Part 2 comes into force by Order in Council. The reason for this is that the effective dates of the amendments in Part 2 will need to align with the effective dates in Australia, and depend on the following:

  • the commencement of the Australian implementing legislation. The Australian Intellectual Property Laws Amendment Act 2015 received its Royal assent on 25 February 2015. Schedule 4 of that Act provides for a single trans-Tasman patent attorney regime and commences on a day to be fixed by Proclamation (subject to a 24-month sunset clause):

  • the entry into force of the 2 bilateral arrangements with Australia, after Australia and New Zealand have notified each other through diplomatic channels that their respective requirements for the entry into effect of the bilateral arrangements have been completed.

Part 2 will be repealed if it is not in force by the Australian sunset date of 24 February 2017.

Clause 3 provides that the Patents Act 2013 (the Act) is the principal Act being amended by the Bill.

Part 1Amendments to principal Act including single patent application and examination process with Australia

Clause 4 amends section 92 of the Act to remove the right to oppose a grant of patent on the ground that the claim or claims relate to more than 1 invention, and to bring the law back to the position under the Patents Act 1953.

Section 39(2)(a) of the Patents Act 2013 still provides that a claim must relate to 1 invention (as did section 10(4) of the Patents Act 1953.) Section 104 of the Patents Act 2013 still provides that a patent must be granted for 1 invention only but that it is not competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than 1 invention (as did section 29(4) of the Patents Act 1953).

Clause 5 inserts a new section 220A into the Act to allow the SAP and the SEP to operate in New Zealand, and allows matters to be delegated to the Australian Patents Commissioner, Deputy Commissioner, and persons working for IP Australia. Australia and New Zealand are developing a bilateral arrangement to support these processes, to develop the detailed framework of the SAP and the SEP. The Bill enables regulations to be made to implement that arrangement.

Part 2Amendments to principal Act including joint registration regime with Australia for patent attorneys

Clause 6 inserts a new Part 6 into the Act to give effect to a single joint regulatory framework for patent attorneys to register and practise 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 new Part implements the Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys (the patent attorney bilateral arrangement) signed in March 2013. The new single trans-Tasman regulatory framework will be based on the existing Australian registration regime, as amended in Australia to extend the regime to New Zealand-based patent attorneys.

A copy of the patent attorney bilateral arrangement can be found at http://www.iponz.govt.nz/cms/pdf-library/iponz/bilateral-arrangement-signed-march-2013.pdf

New section 268 sets out the purpose of the new Part 6.

New sections 269 and 270 are interpretation provisions for the new Part 6. Many of the defined terms take the meanings given to them by the patent attorney bilateral arrangement or in Australian law. For example, professional misconduct and unsatisfactory professional conduct are defined in the same way as in regulation 20.32 of the Patents Regulations 1991 (Aust). Many of the defined terms can be found on the Australian Commonwealth Law Internet site. For example, the Australian Code of Conduct for Patent and Trade Marks Attorneys 2013 can be found at https://www.comlaw.gov.au/Details/F2013L01822

New sections 271 to 273 provide that the joint registration regime with Australia applies in New Zealand. For example, a person providing patent attorney services in New Zealand must be registered under, and comply with, the joint registration regime.

New sections 274 to 281 contain offences and penalties that are substantially the same as those that will apply in Australia. For example, an unregistered individual who does patent attorney work commits an offence and is liable to a fine not exceeding $6,000. Clause 3.3(e) of the patent attorney bilateral arrangement requires New Zealand to implement legislation to provide for substantially similar offences to those in Australia.

New section 282 provides for proceedings of the Disciplinary Tribunal and the Appeals Tribunal that are held in Australia in respect of New Zealand patent attorneys.

First, Part 4 of the New Zealand Evidence Act 2006 is applied to the Disciplinary Tribunal, by declaring it to be “an Australian court”. The effect is that various provisions of that Act will apply to the Disciplinary Tribunal, including the following:

  • section 173 (Tribunal may take evidence and receive submissions by video link or telephone conference in New Zealand):

  • section 174 (powers of Tribunal):

  • section 175 (orders of Tribunal):

  • section 176 (place where evidence given part of Tribunal):

  • section 177 (privileges, protections, and immunities of Judges, counsel, and witnesses in Tribunal proceedings):

  • section 178 (power of Tribunal to administer oaths in New Zealand).

The Appeals Tribunal was declared to be “an Australian court” on 19 March 2015, with effect from 31 March 2015. Section 152 of the Evidence Act 2006 provides that the Minister of Justice may, by notice in the Gazette, declare any tribunal of the Commonwealth of Australia to be “an Australian court”.

Secondly, new section 282(3) declares that the recognition and enforcement provisions of the Trans-Tasman Proceedings Act 2010 apply to both the Disciplinary Tribunal and the Appeals Tribunal.

In addition, remote appearances from New Zealand in a proceeding before the Disciplinary Tribunal or the Appeals Tribunal will be possible in accordance with the Australian Trans-Tasman Proceedings Act 2010 if Australia prescribes both the Tribunals to be Australian tribunals under subdivisions A and B of division 2 of Part 6 of that Act.

New sections 283 to 286 apply if the Disciplinary Tribunal sits in New Zealand. These new sections are based on Part 1A of the Judicature Act 1908, which provides for the Australian Federal Court to sit in New Zealand to hear a trans-Tasman market proceeding. The Bill uses this model to enable the Disciplinary Tribunal to sit in New Zealand because the Disciplinary Tribunal is constituted under Australian law and is therefore an Australian tribunal. The relevant provisions of the Judicature Act 1908 may move into the Trans-Tasman Proceedings Act 2010 if the Judicature Modernisation Bill 2013 is passed, and the Bill includes minor changes to wording and cross-references in anticipation of that move.

New section 287 clarifies the territorial scope of the new Part 6 and deals with the jurisdictional overlap between New Zealand and Australia. New section 287(2) is consistent with the principle that, in general, New Zealand law does not automatically apply to activities, people, or property that are not within New Zealand’s territory.

New section 288 mirrors regulation 20.53 of the Australian Patents Regulations 1991, which provides that a registered patent attorney has the same right of lien over the documents and property of a client as a solicitor.

New section 289 requires a member of the Disciplinary Tribunal who is ordinarily resident in New Zealand to comply with an investigation under the Australian Freedom of Information Act 1982 or the Australian Privacy Act 1988.

New section 290 is a regulation-making power. Among other things, it enables regulations to be made to update the penalties for offences if the Australian penalty unit dollar amounts are updated under section 4AA of the Australian Crimes Act 1914. Clause 3.3(e) of the patent attorney bilateral arrangement requires New Zealand to implement legislation to provide for substantially similar offences to those in Australia.

Clause 7 and new Schedule 1 provide for transitional matters. In particular,—

  • patent attorneys registered under the Patents Act 1953 are deemed to be registered under the joint registration regime on the commencement of the Bill. Also, item 81 of Schedule 4 of the Australian Intellectual Property Laws Amendment Act 2015 (the Australian Amendment Act) requires the designated manager under the joint regime to register individuals who, immediately before the commencement of that item, were registered as a patent attorney under New Zealand law:

  • there is a transitional period of 4 years for people currently sitting the existing professional qualification examinations. Also, item 82 of Schedule 4 of the Australian Amendment Act provides for this transitional period:

  • existing disciplinary proceedings in New Zealand continue under the Patents Act 1953:

  • other transitional provisions are in the Australian Amendment Act (see items 83 and 84 of Schedule 4).

Clause 8 repeals the Patents Act 1953. Most of this Act was repealed by section 247 of the Patents Act 2013. Section 248 preserved the patent attorney provisions. Those preserved sections, and therefore the whole Act, are now spent.

Clause 9 and Schedule 2 make consequential amendments to other enactments.