UPDATE – Trans-Tasman Attorneys and Australian mega firms

2016 was a year of change in the patent attorney profession in Australia and New Zealand and 2017 has started off in the same manner. Below we have highlighted some of the changes which have happened in the past year or so which may be of interest.

No Single Application or Examination Process for Australian and New Zealand Patents

Legislation designed to implement a single application process for both Australia and New Zealand, and a single examination process (whereby a single examiner from either IP Australia or the Intellectual Property Office of New Zealand would examine an application) was introduced in both Australia and New Zealand in 2015. However, during consideration of the of these changes, the Commerce Select Committee of the New Zealand Parliament considered there to be significant problems with the proposed processes and advised against proceeding with that aspect of the Bill. The provisions of the single application and single examination processes were subsequently excised from the Bill. Thus Australian and New Zealand patent applications will continue to be dealt with separately.

New Trans-Tasman Patent Attorney regime

A new Trans-Tasman patent attorney registration regime commenced on 24 February 2017. Whilst New Zealand Patent Attorneys and Australian Patent Attorneys have been able to register and practice in the other country for some time, there were separate Patent Attorney registers, qualification and continuing education requirements. Attorneys were also subject to separate and different codes of conduct and disciplinary tribunals. The new regime establishes a single register for all Australian and New Zealand Patent Attorneys and unifies all of the above, largely based on the previous Australian regime. Another effect of the new regime in New Zealand is an increased flexibility for patent attorney firms to form mixed partnerships and to incorporate.

Public Listings of Australian IP Firms

Australian firms have been able to operate as mixed partnerships and to incorporate for a number of years. However, a more recent major development in the Australasian profession has been the listing of Australian IP firms on the Australian Stock Exchange (ASX). In each case, a holding company has been formed to take ownership of the established IP firm and undertake a plan of acquisition of other IP firms and to enhance their presence in the Asian region, under the ownership of that single holding company.

There are now three publicly listed IP firms in Australia:

IPH Limited, which listed in November 2014, the holding company for Spruson & Ferguson, Fisher Adams Kelly Callinans, Pizzeys, Cullens and Ella Cheong Intellectual Property Agency (Beijing);

Xenith IP Limited, which listed in November 2015, the holding company for Griffith Hack, Shelston IP and Watermark; and

QANTM IP Limited, which listed on 31 August 2016, the holding company for Davies Collison Cave and FPA

These three listed mega firms now have a presence in Australia, New Zealand, Hong Kong, China, Singapore, Indonesia, Malaysia and Thailand.

Although public listings are a first for the IP industry in Australia, Australian law firms have been listing since 2007, not always to positive effect[1]. Certainly though, the extent to which these three holding companies now account for the Australian profession is unprecedented[2].

Various criticisms have been levelled at these new holding companies, including how they will balance client and shareholder interests, whether there is a conflict of interest if two firms owned by the same holding company act on opposing sides of a dispute, whether senior staff will leave when they no longer have an upward or equity route, and whether so much of the Australian profession being tied up in three firms is anti-competitive. All of these are, at this stage, mostly speculative or hypothetical. Nevertheless, at least one regulatory body is sitting up and taking notice, with the Trans Tasman IP Attorneys Board for Patent and Trade Marks Attorneys (previously the (Australian) Professional Standards Board or PSB ) announcing an review of the recent consolidation within the profession by Professor Andrew Christie.

At this time, in New Zealand all patent attorney firms remain independent. Nevertheless, we, like our colleagues in other countries, are watching how this experiment proceeds with interest.

27 February 2017

[1] See for example the experience of Slater & Gordon http://www.smh.com.au/good-weekend/the-undoing-of-slater-and-gordon-20160613-gphmej.html; and http://www.smh.com.au/business/all-remaining-equity-in-slater-and-gordon-wiped-out-with-latest-loss-20170226-guluq9.html

[2] The three companies account for over 25% of all registered attorneys http://blog.patentology.com.au/2016/11/a-quarter-of-australias-patent.html#comment-3107512928

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