Trans-Tasman Patent Attorney Regime

With the emergence of the bilateral trans-Tasman patent attorney regime, patent attorneys from Australia and New Zealand can practice across borders to prosecute patents in both countries. This agreement is very beneficial for both Australia and New Zealand, which have a combined total of less than five hundred (500) patent attorneys, yet serve a combined population of approximately 28 million people.[1][2]

Practitioners registered in both countries must be aware of the filing deadlines for both countries. For example, the filing of a national phase application that stems from an international application is thirty-one months for both countries. However, this is not the case for every country to the Convention.

For this reason, it is important for patent attorneys licensed in both countries understand the differences between the laws. For example, Australian patent applications are not examined automatically.[3] The applicant’s patent practitioner must file a request for examination within two (2) months of receiving the notice from the Australian Patent Office. And at the time of examination, the applicant must provide details, such as any assignment or employment that derives the rights in the patent. Oppositely and similar to the United States, New Zealand patent applications are examined in due course simply by filing and waiting in line at the New Zealand patent office.[4] Yet another difference, New Zealand requires that divisional patent applications are filed before the parent application is accepted, whereas Australia allows 3 months from the acceptance of the parent application to file.

Approximately half of all Australian and New Zealand patent attorneys are registered to prosecute patents in both countries.[5] Accordingly, it is important to vet your patent attorney to make sure they understand some of the differences between the two countries.

* The general information provided does not constitute, and should not be relied upon as, legal advice and should not be used as a substitute for obtaining legal advice from an attorney.

[1] http://en.wikipedia.org/wiki/Demographics_of_Australia

[2] http://en.wikipedia.org/wiki/New_Zealand

[3] http://www.freehillspatents.com/australia-from-filing-to-grant

[4] http://www.freehillspatents.com/new-zealand-from-filing-to-grant

[5] http://www.iponz.govt.nz/cms/pdf-library/iponz/03-trans-tasman-patent-attorney-factsheet.pdf