Trans-Tasman scheme for licensing patent attorneys

A scheme prompted by the need for alignment between jurisdictions

Prior to the decision being taken to implement the trans-Tasman patent attorney licensing regime in 2013 the Trans-Tasman Mutual Recognition Arrangement (TTMRA) between New Zealand and Australia was in place. At that time, the majority patent attorneys were registered to practice in both countries under the mutual recognition provisions of the TTMRA.

Patent attorneys were the first occupational group to be regulated under the single trans-Tasman regulatory framework. Despite there being a significant overlap between the Australian and New Zealand registers, in practice only a small number of patent attorneys were providing services in both countries. The TTMRA didn’t provide the benefits that were expected for innovative businesses, specifically around growing the size of, and facilitating competition within, the profession to lower the cost of their services to those businesses.

This meant that the businesses were paying more for patent attorney services than they needed to. In addition, there were significant economies of scale to be realised under a single trans-Tasman licensing regime, and therefore savings in regulatory and business compliance costs for the majority of patent attorneys.

A relatively small number of professionals were affected

Compared to other regulated occupations in New Zealand, the patent attorney profession is small, providing extra impetus for harmonisation. As of 1 July 2021 there were 205 patent attorney resident in New Zealand and 797 resident in Australia.

Lessons learnt

Keep communicating with those who’ll be affected

Continuous communication with stakeholders is key – especially with professional bodies who represent parties affected by the changes.

Make sure you keep communicating during the implementation stage so that those affected understand the impact of any changes and when they are likely to take effect.

Commit to a launch date and a short transition period

Announce an implementation date and keep the transition period as short as practical. An implementation date will help Government and stakeholders focus on what needs to be done to hit the deadline.

TTMRA hadn’t facilitated competition in the trans-Tasman as expected

Despite the high levels of cross-registrations between Australia and New Zealand, the volume of trans-Tasman patent services provided had not grown under the TTMRA. New Zealand patent attorneys continued to primarily service the New Zealand market and Australian patent attorneys the Australian market.

There were barriers that discouraged businesses from using a patent attorney in the trans-Tasman. Because the TTMRA did not require an Australian patent attorney registering in New Zealand to demonstrate their knowledge of New Zealand law and vice versa for New Zealand patent attorneys registering in Australia, patent attorneys in both countries tended to promote their services to their clients, especially foreign clients, on the basis that only New Zealand patent attorneys knew and understood New Zealand law and practice and vice versa in Australia. There were also differing standards of service required in Australia and New Zealand, with patent attorneys in Australia having to comply with an approved code of conduct and undertake annual professional development, requirements that did not apply to patent attorneys providing their services in New Zealand. These differences in each other’s national licensing regimes added a further layer of complexity for businesses to determine which patent attorneys would provide the “best value for money”.

New Zealand was looking to revamp its patent attorney framework

Prior to the implementation of the trans-Tasman licensing regime, patent attorneys in New Zealand were regulated under a 1953 occupational regulatory framework that compared poorly with the design of modern occupational regulatory frameworks such as those that govern lawyers, accountants and other regulated professions.

In 2003 Cabinet agreed that the patent attorney regime should be modernised to align with the regulatory framework in Australia and adopt many of its key features. The Australian regulatory framework has been substantially reviewed and modernised in the late 1990s. The TTMRA had an impact of pushing New Zealand’s review of the regulation of the patent attorney profession more closely towards recommending a similar regime be adopted to that which was in operation in Australia.

However, delays in drafting and introduction of a new Patents Bill to repeal and replace the Patents Act 1953, which contained the 1953 regulatory framework for patent attorneys, and the development of 2008 Single Economic Market (SEM) Agenda ultimately lead to those 2003 Cabinet decisions on modernising the occupational regulatory framework not being progressed.

The SEM Agenda included principles that affected occupational regulation

The economic relationship between New Zealand and Australia is built on the New Zealand- Australia Closer Economic Relationship agreement. In 2009, in order to create a seamless trans-Tasman business environment, the two countries committed to a process called the Single Economic Market (SEM) agenda. The SEM agenda advanced a broad range of initiatives under 4 key themes:

• reducing the impact of borders
• improving the business environment through regulatory co-ordination
• improving regulatory effectiveness
• supporting business opportunities.

Some of the key principles outlined in the SEM framework are relevant to occupational regulation:

• regulated occupations should be able to operate seamlessly between each country
• services supplied in one country should be able to be supplied in the other
• both governments should seek to achieve economies of scale in regulatory design and implementation
• outcomes should seek to optimise net Trans-Tasman benefit.

The idea of a single scheme to regulate patent attorneys took root

One of the initiatives taken forward was the development of a single trans-Tasman regulatory framework for patent attorneys. With Cabinet deciding in 2003 to closely align regulation of patent attorneys with the Australian regime and the new regime not yet implemented in New Zealand, it became clear that implementing an independent regime in New Zealand that would be largely identical to the Australian regime would:

• have been expensive for New Zealand patent attorneys
• inefficient for administratively to maintain
• double the regulatory and business compliance costs for patent attorneys,
• not facilitate the trans-Tasman competition for patent attorney services in the manner intended with the TTMRA.

The regulatory impact analysis found that a single trans-Tasman scheme was the most cost-effective way to modernise New Zealand’s regulatory framework for patent attorneys. This was largely due to the economies of scale that could be achieved under a single framework that would benefit the majority of Australian and New Zealand patent attorneys (those who were at that time and continued to be registered to practice in both countries at the time the trans-Tasman licensing regime was implemented). 

The regime includes many best practice ideas

Australia and New Zealand have a combined domestic patent attorney licensing regime, helping to create a seamless trans-Tasman business environment for the provision of patent attorney services. The regime is set out in an arrangement between Australia and New Zealand.

The regime includes many best practice features:

• a single trans-Tasman register for patent attorneys administered by the Director General of IP Australia
• Trans-Tasman Intellectual Property Attorneys Board, comprising representatives from Australia and New Zealand, responsible for education and standard of conduct of patent attorneys (formally known in Australia as the Professional Standards Board)
• a single trans-Tasman code of conduct setting out minimum standards of professional and ethical conduct for patent attorneys
• annual continuing professional education requirements
• a Trans-Tasman Intellectual Property Attorneys Disciplinary Tribunal, comprising Australia and New Zealand members, to hear complaints about the conduct of patent attorneys and, if appropriate, discipline patent attorneys
• offences for unregistered persons to describe, or hold, themselves as patent attorneys or patent agents
• offences for unregistered persons to assist anyone to apply for a patent or provide advice about patents for pecuniary gain
• flexible arrangements for patent attorneys to form mixed partnerships and for firms to incorporate.

The regime set new registration requirements

A person wishing to become a registered patent attorney must now have to:

• have an academic (technical) qualification – a tertiary qualification in an area with patentable subject matter like science or engineering degree
• complete a number of accredited courses about intellectual property law and practise provided by tertiary educational establishments
• have 2 years of relevant patents-related work experience
• be a fit and proper person.

Challenges of implementing the trans-Tasman patent attorney regime

Increased registration costs

Many New Zealand patent attorneys didn’t want a modernised regulatory framework. They resisted the changes because they would face increased regulatory and business compliance costs associated with complying with a modern framework. It would be more expensive to register and stay registered, compared to the fees they had been paying under the 1953 regime.

The Intellectual Property Office of New Zealand, in conjunction with the New Zealand Intellectual Property Attorneys Inc, were responsible for administering the previous regime. Much of the costs associated with the administering the 1953 regime were not being recovered through fees charged.

Fear of increased competition and lower incomes

New Zealand attorneys who accepted that the regulatory framework needing updating wanted New Zealand to maintain its own independent regime.

Many feared that implementing a trans-Tasman licensing regime would lead to increased competition from Australian patent attorneys and result in lower incomes. There was also a perceived risk that there would be a decline in the number of patent attorneys in New Zealand because:

• of a loss of income
• of increased costs to qualify for registration would deter new entrants to the profession.

New Zealand patent attorneys would immigrate because Australia was a more lucrative market for patent attorney services, and leave innovative New Zealand businesses without adequate access to locally provided patent attorney services.

The legal form of implementation

Although there is a high level of economic integration between the two countries, there isn’t the same level of legal integration. Both Australia and New Zealand agreed that it would be too expensive to set up an institution under international law to administer the trans-Tasman patent law regime, given the small size of the profession.

The Trans-Tasman patent attorney licensing regime has been primarily implemented under the Australian Patents Act 1990 with supporting provisions found in the New Zealand Patents Act 2013. 

Prolonged transition period

The long implementation timeline (4 years) and absence of clear implementation date, which wasn’t finalised until late in the day, resulted in some uncertainty probably contributed to New Zealand patent attorneys’ poor awareness of the changes and their readiness to comply with the new regime.

It became clear that many patent attorneys did not fully understand all the details of the new regime, and in particular the transitional arrangements for qualifying for registration under the new regime, and how it would affect them. For example, under the new regime every person who applied to register had to have relevant patents-related experience. Some staff in patent attorney firms found they were unable to register because they did not have sufficient patents-related work experience. These people had been encouraged to take the patent attorney examinations under the old regime on the advice of the New Zealand Intellectual Property Attorneys Inc. They had been advised by this body that they wouldn’t need to have any relevant patents-related work experience to qualify for registration under the new regime’s transitional provisions. This was despite outreach to the profession, and publishing documents that explained how the transitional provisions would apply on the websites of IP Australia, Intellectual Property Office of New Zealand, and MBIE.

References and sources

Trans-Tasman Regulatory Framework for Patent Attorneys Regulatory Impact Statement [PDF 45 KB](external link) — The Treasury

Strengthening Economic Relations between Australia and New Zealand - Joint study [PDF 105 KB](external link) — Productivity Commission – Australian Government

Member benefits(external link) —New Zealand Intellectual Property Attorneys Inc

Patent attorneys(external link) — Intellectual Property Office of New Zealand

The Trans-Tasman patent attorney registration regime(external link) — Ministry of Business, Innovation and Employment