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Australia/New Zealand: Joint Regulatory System for Patent Attorneys Comes into Effect

(Mar. 1, 2017) On February 24, 2017, legislation implementing a joint Australia-New Zealand system for regulating patent attorneys came into effect. (Press Release, Arthur Sinodinos & Jacqui Dean, Trans-Tasman Patent Attorney Regulatory Regime in Effect (Feb. 24, 2017), Minister for Industry, Innovation and Science website.) The relevant New Zealand legislation was enacted in November 2016. (Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill, NEW ZEALAND PARLIAMENT (last visited Feb. 28, 2017); Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016, NEW ZEALAND LEGISLATION.) It amended the Patents Act 2013 to introduce “a joint registration regime with Australia for patent attorneys.” (Id.; Patents Act 2013, NEW ZEALAND LEGISLATION.) Corresponding Australian legislation was enacted in February 2015, amending the Patents Act 1990 (Cth). (Intellectual Property Laws Amendment Act 2015 (Cth), sch 4 & Patents Act 1990 (Cth), FEDERAL REGISTER OF LEGISLATION; Intellectual Property Laws Amendment Bill 2014, PARLIAMENT OF AUSTRALIA (last visited Feb. 28, 2017).)

The reforms in the two countries implement a bilateral agreement signed in March 2013 and form part of the Single Economic Market agenda, which was agreed to by the prime ministers of both countries in 2009. (Arrangement Between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys (Mar. 2013), IP Australia website; Press Release, IP Australia, Single Patent Attorney Regulatory Regime with New Zealand Commences (Feb. 23, 2017); Single Economic Market, NEW ZEALAND MINISTRY OF FOREIGN AFFAIRS AND TRADE (last visited Feb. 28, 2017).)

The key features of the new joint regulatory system are as follows:

  • A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
  • The  Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
  • The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
  • Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
  • The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trade marks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
  • The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
  • Applications made to IP Australia for all IP rights (patents, trade marks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
  • A single address for service will not be available on 24 February 2017 for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future. (Single Patent Attorney Regulatory Regime with New Zealand Commences, supra.)

Existing patent attorneys in each country were “automatically registered as trans-Tasman patent attorneys on the commencement date.” (Id.)

The Trans-Tasman IP Attorneys Board is an Australian statutory body with members from both countries. The criteria for registering under the joint system are set out in the Australian patent regulations. (Patents Regulations 1991 (Cth), pt 2 ch 20, FEDERAL REGISTER OF LEGISLATION; Registration Requirements for Patent Attorneys and Trade Marks Attorneys, TRANS TASMAN IP ATTORNEYS BOARD (last visited Feb. 28, 2017).)

The Disciplinary Tribunal is also an Australian statutory body, but has been deemed to be an Australian court under New Zealand law and “is therefore able to have jurisdiction over New Zealand residents. The Tribunal may, for example, serve subpoenas in New Zealand, sit in New Zealand, and take evidence and receive submissions by telephone or video conference from New Zealand when sitting in Australia.”  (Patent Attorney Registration and Renewal, NEW ZEALAND INTELLECTUAL PROPERTY OFFICE (last visited Feb. 28, 2017); Evidence Act 2006, s 152, NEW ZEALAND LEGISLATION.)