07 April 2011

TransTasman Patent Law Harmonisation

IP Australia and the New Zealand Ministry of Economic Development have jointly released a 47 page discussion paper [PDF] regarding a trans-Tasman regulatory framework covering patent attorneys. The proposal is part of the Single Economic Market (SEM) outcomes framework that "aims to accelerate and deepen trans-Tasman regulatory integration and make the IP system work more efficiently for innovators and businesses".

The paper describes a single trans-Tasman governance body that would have responsibility for patent attorney education, training and disciplinary standards. At the moment some 500 patent attorneys reside in Australia or New Zealand and are registered in both countries (around 59% of Australian and New Zealand patent attorneys, excluding those residing in other countries). In Australia the patent attorney profession is regulated by the Professional Standards Board for Patent & Trade Marks Attorneys (PSB) (concerned with education and discipline) - analogous to Law Society regulation of solicitors - with registration being the function of the Director General of IP Australia as Designated Manager under s 227A of the Patents Act 1990 (Cth). The paper notes that New Zealand currently does not have a statutory professional standards board. The New Zealand Patent Attorneys Bill 2008 (the “New Zealand Bill”), currently before the NZ legislature, provides for establishment of the Patent Attorneys’ Standards Board of New Zealand with a similar role and functions to that of Australia’s PSB.

Becoming a registered patent attorney under the New Zealand Patents Act 1953 involves meeting criteria such as passing the New Zealand Patent Attorney Examinations conducted by the Commissioner of Patents in conjunction with the New Zealand Institute of Patent Attorneys (NZIPA). Candidates must also satisfy certain other criteria, such as three years work experience with a registered patent attorney or in the Intellectual Property Office of New Zealand (IPONZ).

The paper notes that -
The trans-Tasman Mutual Recognition Arrangement ... in effect since 1998, allows reciprocal registration in each country, but there remain a number of administrative inefficiencies and inconsistencies. For example, a person has to complete registration formalities and meet registration requirements in one jurisdiction to be entitled to seek reciprocal registration in the other jurisdiction. This leads to a duplication of both fees (added expense) and documentation. While the registration regimes are broadly similar, there are also a number of significant differences between the two regimes. The New Zealand Bill would not address all these differences.
Harmonisation would involve -
establishment of a single trans-Tasman Governance Body or board with responsibility for – Education, Discipline and Registration. It is proposed that the respective roles and functions of the PSB (at least in respect of its responsibilities to the patent attorney profession), the proposed Patent Attorneys Standards Board of New Zealand, the Australian Designated Manager (the Director General of IP Australia), and the New Zealand Commissioner of Patents (Group Manager of IPONZ) would be merged into a new body. Underpinning this arrangement would be a -
• single definition of the functions and services which can only be performed by a registered patent attorney or legal practitioner;

• single patent attorney code of conduct;

• single disciplinary regime;

• consistent attorney qualification/continuing education requirements;

• single registration process and register;

• single fees regime; and

• single secretariat support unit.
The claimed rationale for the new regime is that -
The majority of Australian and New Zealand patent attorneys are registered in both countries. A single governance body will provide economies of scale, saving time money and effort for the profession as a whole.
The mooted benefits for innovators are -
• Better access to patent attorneys in both countries will encourage competition.

• Uniform accreditation of attorneys will support continued high levels of service on both sides of the Tasman.
The claimed benefits for patent attorneys are -
• Less red tape - patent attorneys will only need to register with one organisation.

• Increased business opportunities for attorneys not currently registered in both countries.
The paper covers -
1. A Single Governance Body for Patent Attorneys

2. Consistent Qualification Requirements for Registrationas a Patent Attorney

3. A Single Registrar of Patent Attorneys

4. A Single Code of Conduct

5. A Single Disciplinary Regime
A Joint Working Group of officials from both countries has independently developed this paper, in order to elicit comments from the profession and the public. Unusually, Australia's Professional Standards Board for Patent and Trade Mark Attorneys has not yet been involved.

IP Australia has sought written responses to the discussion paper by 16 May 2011.