Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Friday, November 22, 2013

Stronger patents, faster

By Lester Miller, Senior Associate

'I could have done that!' saith the Rock Star, upon grasping the breadth of a patent claim, 'Where's the invention?'. In some cases, it's a valid point , economically made. We update you with several measures that applicants, third parties and governments are taking to improve the quality of patents.

Third-party observations

The depth of searching resources is a major factor in patent quality. Third parties can submit information that is relevant to a patent application to an official body – WIPO for international patent applications, or local and regional patent offices. That information can be taken into account during examination.

Patent applications are published at about 18 months from the priority date – much sooner for utility models and Australia's innovation patent. Third parties are then able to review the scope of the monopoly sought by the applicant. Australia, Europe, China, WIPO and the United States, among many others, allow third parties to submit information arguably relevant to the claims for consideration during examination. In Europe, third party observations have doubled since 2006, and tripled in the biotech sphere, which has 40 per cent of the total.

Peer-to-patent pilots have run in several countries including the US, Australia, Japan, and the United Kingdom. This system, where volunteer technical experts search for prior art to supplement patent office results, was found by the USPTO to supplement or support examiners' prior art in 25 per cent of involved cases.


The patent offices of several countries now share their search information by uploading it to a central database. The so-called Vancouver Group – Australia, Canada and the United Kingdom – were the instigators of this system, prompting WIPO to operate a database of search results for all their searching work products. This was commenced in March 2013, and since then, China, Singapore and New Zealand have joined in and allow each other to view their work. Of course, this assists only where the patent application has been made in several countries.

Global Patent Prosecution Highway

Once a patent office in one country has examined and allowed a patent, other patent offices taking part in a new pilot program can be asked to expedite the examination of those same claims in their office. The GPPH will operate from 6 January 2014. Thirteen offices are taking part in this extended pilot program, which has been shown in bilateral programs to shorten the examination process, as well as cut costs for applicants by reducing time responding to similar objections in different offices. Australia, Canada, Denmark, Finland, Japan, Korea, Norway, Portugal, Russia, Spain, the United Kingdom, the United States, and the Nordic Patent Institute are all taking part.

For Australia, the GPPH will replace its present PPH arrangements, which were only with the United States and the PCT. The United States system was found to provide more certainty for applicants with a 90 per cent allowance rate, compared with less than 50 per cent for non-PPH cases.

Trans-Tasman cooperation

Australian and New Zealand patent offices will, within a couple of years, be sharing resources to a much greater extent, assigning the same examiner on cases that are filed in both countries. Each case will be examined under the relevant country's law, ultimately leading to two separate and independent patents.

With examiner training on both sides of 'The Ditch' in laws of both countries, this should lead to a more efficient examination process. Interestingly, even though 55 per cent of Australian and New Zealand patent attorneys are dual-qualified, only 40 per cent of applications filed in both countries used the same attorney, suggesting that a 15 per cent efficiency could be extracted right now. The New Zealand Government has now approved the single examination procedure, but it won't be happening for a couple of years.

Patent attorneys

From 23 November 2013, patent attorneys will be required to adhere to a stricter Code of Conduct, which has now become a statutory instrument. Registered attorneys will be required to work only in areas of technology or law with which they are familiar, observe tightened conflict of interest rules and act promptly on instructions, among other things.

Finally, Australian patent examiners also find themselves under ever-greater quality scrutiny with their work now randomly audited on a monthly basis.

There are finite resources but with these latest developments, unjustifiably broad monopolies, which the Statute of Monopolies sought to eliminate, should be less of a concern to the public.

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