Concurrent Australian & New Zealand patent examination

Concurrent Australian and New Zealand patent examination – 1 November 2013

The Australian Patent Office (IP Australia) reports that Australia and New Zealand are one step closer to a single patent application and examination process here.

Details of the new process are few and far between. The New Zealand Patent Office (IPONZ) explains

  • Under the SAP applicants will be able to apply for patent protection simultaneously in Australian [sic] and New Zealand via online portals hosted on the websites of IPONZ and IP Australiahere and that
  • “Patent applications filed in both Australia and New Zealand for the same invention will be examined by one examiner located in either country.
  • Examiners will grant or refuse applications under each country’s law. It will not be necessary for our laws to be identical” here.

An implementation date is yet to be announced, although there is nothing to contradict IP Australia’s update of 18 January 2013 reporting that in “October 2011 IP Australia and IPONZ agreed on a three-year implementation plan”, and on 23 October 2013 New Zealand’s Commerce Minister, Craig Foss, announced his government’s approval of the process here.

Whilst (on the information at hand) the new system will not constitute a substantive change in the law of either country, the practicalities of the new process remain to be seen. In particular, it remains to be seen how significant differences in the costs and timing of examination will be resolved.

At present the official fee for filing a New Zealand patent application is NZ$250 (about A$220 or US$210) and there are no official fees associated with examination, acceptance (allowance) or grant. In contrast, the official fees in connection with filing, examination, acceptance and grant of an Australian patent application sum to A$1110 (about NZ$1280 or US$1050) plus A$1400 if IP Australia consider additional searching is required, plus A$110 per claim beyond the 20th claim.

Typically, a New Zealand examination report will issue within weeks of filing (see here), whereas examination of an Australian patent application filed today could be as much as four years away.

The Australian examination process has always been much slower than the New Zealand examination process, and IP Australia now has an extraordinary backlog of patent applications to examine. The backlog arises from a huge number of patent applications filed in advance of a change in Australian law introduced 15 April 2013 (read more here).

Authored by

Ben Mott Patent Attorney & Mechanical Engineer Ben Mott

Mechanical Engineer & Patent Attorney