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

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) (TTPA) Amendment Bill passed into law on 15 November 2016, and is expected to commence on 24 February 2017.

The amendments in the Bill:

  • Remove ‘unity of invention’ as a ground to oppose a patent being granted, which will apply retrospectively from 13 September 2014 (the date of commencement of New Zealand’s Patents Act 2013);
  • Establish a single trans-Tasman patent attorney regime including a single qualification for registration and code of conduct; and
  • Create a single trans-Tasman patent attorney register.

It appears unity of invention as a ground for opposition was unintentionally introduced in New Zealand’s Patents Act 2013, as it was not present in the Patents Act 1953, and nor was there any policy intention to introduce lack of unity as a ground of opposition. By removing unity of invention as a ground for opposition, the TTPA Amendment Bill brings the grounds for opposing patent grant in New Zealand back in line with Australia and other jurisdictions.

The TTPA Amendment Bill also provides for a joint registration regime for Australian and New Zealand patent attorneys. Australian patent attorneys were previously able to register as New Zealand patent attorneys and vice versa; however, the TTPA Amendment Bill legislates that patent attorneys resident in New Zealand are subject to a new joint registration regime, which is based on the existing Australian registration regime. Existing registered Australian and New Zealand patent attorneys will automatically be registered as Trans-Tasman patent attorneys, and transitional provisions exist for those currently studying to become a New Zealand patent attorney. However, future patent attorneys resident in New Zealand (whom do not satisfy the transitional provisions) will be required to have the same educational qualifications as Australian patent attorneys. Additionally, all New Zealand patent attorneys will be held to the same code of conduct, disciplinary regime and continuing professional education requirements as existing Australian patent attorneys. Corresponding amendments to the Australian Patents Act 1990 relating to a single trans-Tasman patent attorney regime have already been passed and are due to commence before 25 February 2017.

Of note, the TTPA Amendment Bill was initially intended to also introduce legislation for a single Trans-Tasman patent application and examination process; however, these provisions were deleted from the Bill, and are not expected to be re-visited in the foreseeable future.

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