SUBMISSIONS REGARDING PROPOSAL FOR TRANS TASMAN REGULATION OF PATENT ATTORNEYS - CREATEIP

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1 16 May 2011 Ministry of Economic Development By to: SUBMISSIONS REGARDING PROPOSAL FOR TRANS TASMAN REGULATION OF PATENT ATTORNEYS - CREATEIP BACKGROUND 1. CreateIP is a boutique Patent Attorney specialist firm based in Christchurch, New Zealand. CreateIP includes two patent attorneys with dual registration in New Zealand and Australia. CreateIP also employs two patent attorney trainees who are currently enrolled and sitting exams to become registered patent attorneys in New Zealand. CreateIP works with a variety of New Zealand companies from the inventor level through to hundred million dollar companies and as such has an interest in the new proposal for Trans-Tasman regulation of patent attorneys. 2. Submissions follow below regarding the proposal for Trans-Tasman regulation of patent attorneys based on our experiences and information provided to the profession via the Ministry of Economic Development in April SINGLE ECONOMIC MARKET: OUTCOMES TO BE ACHIEVED 3. The SEM framework aim is to achieve fewer costs for those practicing in the patent attorney profession. The status quo of currently being registered in both New Zealand and Australia has minimal costs involved. It is acknowledged that the new Patent Attorneys Bill will raise the bar in New Zealand and therefore a cost increase to registration fees for patent attorneys is inevitable. In general, the proposals made under the new Trans-Tasman discussions are considered mildly cost beneficial. In respect of costs, we note that New Zealand examination fees are very low and therefore do not allow for proper compensation of Examiners and the Examination Board that currently administer File Ref: TTR PATENT ATTORNEYS Page 1 of 6 P: M: R: A: F: E: robert@createip.co.nz angela@createip.co.nz 20 Bealey Avenue, PO Box , Christchurch 8640, New Zealand

2 qualification in New Zealand. In addition, as the fee is so low candidates may present for exams that are ill prepared to sit the exams, thereby wasting both their own time as well as that of the Examiners. An increase in the Examination fee is also suggested when looking at costs and fees in general. 4. One aspect of the SEM framework that we understand will remain is the need to have a local address for service in either Australia or New Zealand. Given that the SEM framework is supposed to reduce costs as well as create greater efficiencies, maintaining a local address for service appears at odds with the desired aims. It is therefore suggested that this requirement be removed and that either an Australian or a New Zealand address for service be sufficient in either jurisdiction. 5. In the documents put out for public review it has been very clear that the MED and Australian equivalent have not reviewed the issue of Trade Mark Attorneys or a Trade Mark Attorney qualification in New Zealand. This is highly unfortunate and we urge the authorities in the strongest terms to reconsider their approach to the Trade Mark attorney qualification. This issue needs to be addressed now as it would be a massive penalty to New Zealand if Australia gets to maintain its current Trade Mark attorney registration but that this wouldn t apply in New Zealand. New rules regarding the requirement of a technical qualification would effectively prevent almost all trade mark attorneys in New Zealand from becoming qualified patent attorneys as most currently practicing trade mark attorneys or those training to be, do not have technical qualifications. A separate qualification would address this point. Given that the Australian system is relatively well established, it seems a simple matter to mirror the Australia system into New Zealand and therefore address this hole in the proposed framework. The cost to a Patent Attorney profession would also decrease as a result of more Trade Mark Attorney s instead putting their focus into a trade mark qualification as opposed to the Patent Attorney qualification, therefore reducing the cost and resource requirement on the Patent Attorney profession, particularly examination requirements. 6. Finally it also is highly disappointing to learn that implementation of the new Patents Bill in New Zealand has been placed on hold while the Trans-Tasman regulatory framework is being discussed. There appears to be no reason why this needs to occur and the fact that this new Bill has been in gestation for many years now means that we are looking like the poor cousin of the world and having an extremely out-dated Bill. If would be preferable to have a new Bill put 2

3 in place urgently to bring us in to line with International best practice as proposed and then address other issues such as the Trans-Tasman regulatory framework either after implementation of the new Bill or at least in parallel with the new Bill becoming a law. 7. As a further point for consideration, it is also requested that some harmonisation of the New Zealand and Australian Patents Acts also be considered. It appears odd that the profession would be regulated jointly yet the two laws under which the two professional bodies operate contain many different requirements. Harmonising the New Zealand and Australia law could also serve to enhance New Zealand s interests in obtaining free trade agreements, for example with the USA, that is to say that the Australian Act was amended in part in order to satisfy USA free trade requirements and amendments. Amendments in New Zealand and Australia could ease the process for obtaining a free trade agreement with the USA. SINGLE GOVERNANCE FOR PATENT ATTORNEYS 8. The single governance body proposed in the discussion papers is largely considered acceptable in our opinion. The proposal of a weighted Board is also considered acceptable and largely the roles and responsibilities of the governance body appear in line with at least that currently the case in Australia and broadly what is under taken in New Zealand. QUALIFICATION REQUIREMENTS FOR REGISTRATION Examination 9. At the moment, New Zealand or Australian Patent Attorneys are required to understand their own Patent Law in some depth. There isn t a similar detailed examination of the corresponding law in the opposing country. New Zealand examination includes a paper on Foreign Patent Law which does have a weighting towards Australian Practice however not to the extent that either country has at present in regard to their own current law. It is recommended that patent attorneys wishing to seek dual registration undertake a detailed examination under both laws, Australia and New Zealand, in addition to a Foreign Law paper. The Foreign Law paper should remove the Australia or New Zealand component and instead focus on other syllabus countries, particularly those represent the main trading countries of both New Zealand and Australia. 3

4 Time 10. The proposal that the qualification time for a patent attorney be reduced from three years to two years is considered unfavourable. At present, after three years training the patent attorney is gaining a practical understanding of the law and how this works in practice. However, there are still aspects of a patent attorneys understanding that lack the depth and experience ideally required even for candidates of a high calibre. Reducing this time period to two years would increase the risk on New Zealand or Australian businesses of receiving advice that is not necessarily in their interests or even worse may result in the loss of rights through incomplete advice. It is therefore suggested that the New Zealand authority encourage maintaining the three year standard currently applied in New Zealand. Qualification Requirements 11. The requirement that a patent attorney have a technical degree or qualification is considered acceptable if a separate trade mark attorney qualification is established. As noted above, many trade mark attorneys do not have technical qualifications yet aspire to become patent attorneys. With implementing a technical degree requirement, this would penalise all existing trade mark attorneys and new trade mark based attorneys to the profession and would therefore limit the public choice as to patent attorneys that may be used. As noted above, were a trade mark attorney qualification in existence, the burden on the profession would decrease in respect of that examination i.e. more trade mark attorneys would seek to aspire to that qualification as opposed to trying to obtain a full patent attorney qualification. Cross Crediting and Governance Body Discretion 12. The ability to cross credit experience or qualifications from other jurisdictions into New Zealand or Australia is encouraged and welcomed. In addition, the ability of the governance body to decide what qualifies as a technical or academic qualification is also encouraged and welcomed. 13. It should also be noted that a current New Zealand Patents Act also includes effectively a trade barrier only allowing British subjects or citizens of Ireland to become registered Patent Attorneys in New Zealand. I note that the new Patent Attorneys Bill in New Zealand no longer has this requirement nor has this been 4

5 discussed in the Trans-Tasman discussions. This is pleasing and we urge the abolishment of this requirement as a matter of urgency as this decreases the pool of talent that may be employed by New Zealand firms therefore limiting the speed and quality of advice that New Zealand Attorneys and New Zealand Companies may utilise. CPE Requirements 14. Implementation of CPE Standards in New Zealand is welcomed. The New Zealand patent attorney profession is one of the few professions where CPE requirements are not mandatory. Implementation of CPE requirements will serve to enhance the profession. Also as most New Zealand Attorneys are also registered in Australia they already meet the standards set by the Australian Authorities. Single Registrants / Single Code of Conduct 15. The suggestions made regarding the single register and single code of conduct are generally welcomed. 16. In material supplied for consideration, reference is made that the register would include a history of the patent attorney listed on the register. There is no discussion in the documents as to what history means or what information would be on the register. Clarification as to the meaning of this term is recommended. Defining Patent Attorney Services 17. There is a rise at present at least in New Zealand of many so called IP Strategy experts who are not qualified Patent Attorneys. Reports that we have seen would indicate that IP strategy advisors are providing advice in respect of commercialisation issues which under the current law is fair and reasonable, however they also complete patent searches and advise regarding patentability and freedom to operate. The worrying trend is that these so called IP Strategy experts are drifting into territory traditionally that covered by the Patent Attorney Act and may provide clients with advice that may be misleading or even be detrimental to their obtaining valid rights. It is recommended that the new Bill, make it clear in simple terms as to the breadth of advice that a patent attorney has a monopoly over. This should extend to giving advice regarding 5

6 patentability of an invention as well as giving advice regarding whether a patent claim is infringed or the validity of a patent claim. Multi Disciplinary Practices / Incorporation of Practices 18. The proposals made by the authorities in regard to MDP s and incorporation is welcome. The fact that MDP s and incorporation have not been allowed is some what perplexing as it is unclear as to what detriment this would have to the public or otherwise. Progressing these changes should be encouraged. 19. For any further information regarding the above submissions, please contact either Robert Snoep or Angela Searle of CreateIP on Yours sincerely CreateIP Robert Snoep / Angela Searle Registered Patent Attorney (NZ and Australia) robert@createip.co.nz / angela@createip.co.nz 6