Home | Databases | WorldLII | Search | Feedback New Zealand Bill of Rights Act Reports

Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill (Consistent) (Section 17) [2015] NZBORARp 51 (7 October 2015)

Last Updated: 3 March 2019

7 October 2015

Hon Christopher Finlayson QC, Attorney-General

Consistency with the New Zealand Bill of Rights Act 1990: Patents (Trans- Tasman Patent Attorneys and Other Matters) Amendment Bill

1. We have considered whether the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill is consistent with the rights and freedoms affirmed in the New Zealand Bill of Rights Act 1990 (‘the Bill of Rights Act’).
2. We have concluded that the Bill appears to be consistent with the rights and freedoms affirmed in the Bill of Rights Act. In reaching that conclusion, we have considered the consistency of the Bill with s 17 (freedom of association). Our analysis is set out below.
   

The Bill

3. The Bill amends the Patents Act 2013. In particular, the Bill proposes the following changes:
   1. an amendment to the grounds on which a person can oppose the grant of a patent under the Patents Act 2013. This would allow patent applicants to claim patent protection for more than one invention per application;
   2. provision for a single patent application process and single patent examination process for Australia and New Zealand; and
   100. a single trans-Tasman registration regime for Australian and New Zealand patent attorneys.
4. The Bill fulfils an arrangement made by the Australian and New Zealand governments as one of the intellectual property outcomes for the Single Economic Market agenda.
   

Consistency with the Right of Freedom of Association – Section 17

5. Section 17 of the Bill of Rights Act affirms that everyone has the right to freedom of association. This right includes not only a right to establish and enter into association with others, but also a right not to be compelled to join or form an association with an organisation.
6. Part 6 of the Bill gives effect to the joint registration regime for patent attorneys in New Zealand and Australia. Under sections 270 and 271 of Part 6 of the Bill, patent attorneys are required to be registered under this new joint registration scheme. In practice, the registration process is automatic as all currently registered New Zealand patent attorneys will be registered under the new regime immediately after the commencement of Part 6.

7. We note that all New Zealand patent attorneys are currently required to be registered under the Patents Act 1953, which the Bill intends to repeal. As the Bill creates a trans-Tasman registration regime, the scope and requirements of the mandatory registration regime are increased.
8. Section 274 of Part 6 also provides for offences for unregistered persons, companies and partnerships practising or holding out as patent attorneys. The penalty is a fine not exceeding $6,000 for individuals and partnerships and $30,000 for companies. A limited partnership commits an offence if it practises or holds out as a patent attorney, and is liable on conviction to a fine not exceeding $30,000.1
9. We consider that mandatory registration under the new registration regime raises a prima facie issue of inconsistency with section 17 of the Bill of Rights Act.

Is this a justified limitation under s 5 of the Bill of Rights Act?

10. Where a provision poses a limit on a particular right or freedom, it may nevertheless be consistent with the Bill of Rights Act if it can be considered a reasonable limit that is justifiable in terms of section 5 of that Act. In accordance with the guidance provided by the Supreme Court in Hansen v R2, we have considered whether a limit on section 17 can be justified under section 5.
11. The Bill’s stated purpose of creating a joint registration regime for patent attorneys can be considered sufficiently important to justify some limitation on the right in section 17. The joint regime would reduce registration costs for, and promote competition between, New Zealand and Australian patent attorneys. It does so by introducing the following key features:
    1. a single trans-Tasman register for patent attorneys;
    2. a single definition of patent attorney services that may only be performed by a registered patent attorney;
    100. a trans-Tasman governance body, comprising Australian and New Zealand members, responsible for educating and disciplining patent attorneys; and
    4. a single trans-Tasman disciplinary regime, including a single code of conduct with which Australian and New Zealand patent attorneys must comply and a trans-Tasman disciplinary tribunal to determine complaints about patent attorneys and, where appropriate, discipline them.
12. Australia and New Zealand currently maintain independent, but similar registration regimes for patent attorneys. However, the majority of New Zealand patent attorneys are registered to practice in Australia and vice versa, through the Trans-Tasman Mutual Recognition Arrangements 1997. Despite the high number of cross-registrations, there is currently ineffectual competition occurring between the patent attorneys, and the volume of trans- Tasman patent attorney services is small.
    

1 These offences are substantially similar to those in Australia, as required by clause 3.3(e) of the Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys.

2 Hansen v R [2007] 3 NZLR 1, (2007) 23 CRNZ 104 (SC).

13. The joint registration regime facilitates increased competition between Australian and New Zealand patent attorneys. This is expected to lead to a reduction in the costs to businesses needing patent attorney services, and have a positive impact on the quality of services being provided.
14. Merging the two national regimes would reduce unnecessary duplication and regulatory and business compliance costs for patent attorneys in both countries. Shared service standards and disciplinary regimes would also provide certainty for both patent attorneys and their clients. We therefore consider that this limit is rationally connected with the objective.
15. We consider that the limit does not impair the freedom more than is reasonably necessary

to achieve the Bill’s objective, and appears to be in due proportion to the importance of the objective. In reaching that conclusion, we note that patent attorneys are already required to be registered in New Zealand under the Patents Act 1953, and the Bill changes only the nature of the body under which they are registered. Compulsory registration also ensures that persons and partnerships providing patent attorney services are qualified and competent to provide such services.

16. We consider that although the Bill raises an inconsistency with the right to freedom of association under section 17 of the Bill of Rights of Act, it is justifiable under section 5 of that Act.

Conclusion

17. We have concluded that the Bill appears to be consistent with the rights and freedoms affirmed in the Bill of Rights Act.
    

Jeff Orr

Chief Legal Counsel Office of Legal Counsel

Disclaimer:

In addition to the general disclaimer for all documents on this website, please note the following: This advice was prepared to assist the Attorney-General to determine whether a report should be made to Parliament under s 7 of the New Zealand Bill of Rights Act 1990 in relation to the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill. It should not be used or acted upon for any other purpose. The advice does no more than assess whether the Bill complies with the minimum guarantees contained in the New Zealand Bill of Rights Act. The release of this advice should not be taken to indicate that the Attorney-General agrees with all aspects of it, nor does its release constitute a general waiver of legal professional privilege in respect of this or any other matter. Whilst care has been taken to ensure that this document is an accurate reproduction of the advice provided to the Attorney-General, neither the Ministry of Justice nor the Crown Law Office accepts any liability for any errors or omissions.