Patents

Graphic Representation of the Impact of ‘Raising the Bar’ Patent Reforms on Patenting Behaviour

June 7, 2013

First published in IAM Blog 29 May 2013

As the dust settles on a frenetic April of patenting activity in Australia, new data has emerged which illustrates the profound effect of recent patent law reform on the number of requests for examination.

The data is presented below:

The Reforms

As many people will be aware, the changes to the law included more stringent standards for:

  • inventive step
  • disclosure in patent specifications
  • amending patent specifications
  • proof requirements during examination and opposition.

Most of the changes apply to applications where examination was requested on or after 15 April 2013.

In view of the impending changes, most practitioners advised their clients to consider requesting examination prior to 15 April so that their applications will be examined under the old, less stringent, provisions. Clients were also encouraged to consider early filing of contemplated patent applications along with an examination request.

Pre-examination Process

The Australian Patent Office issues a ‘Direction to Request Examination’, usually between one and two years after a patent application is filed, if the applicant has not already voluntarily requested examination. Prior to 15 April, the applicant had six months from the date of the direction within which to request examination. A final deadline of five years from the date of filing a patent application also applies, whether or not the Patent Office has issued a direction.

Effect on Examination Requests

Remarkably, the data shows that in the month ending 14 April, applicants filed nearly 22,000 requests for examination. This represents nearly fifteen times the ‘normal’ monthly average.

Breaking down the figures, the number of requests for examination in response to a direction increased from a low of around 850 to a peak of almost 1,700, per month. As expected, the increase in the number of voluntary requests for examination was much more significant, rising from a low of 576 to peak of over 20,000, per month.

Even though applicants had been advised to request examination early so as to ‘avoid the rush’, the data indicates that this advice seemed to have little effect. A significant majority of applicants left it until the last month to take action.

Effect on Patent Filings

The pending changes also prompted an increase in the number of patent applications filed (including national phase entries and divisional applications). Patentology has recently discussed this data in some detail.

Implications

The data demonstrates how IP law reform can significantly influence applicant behaviour. It also highlights the importance of policymakers carefully considering the impact not only of the reforms themselves, but also of the transitional provisions introducing them. The Patent Office originally proposed applying the reforms to all patent applications where a first examination report had not issued. If this proposal had been implemented, applicant behaviour around 15 April would have been dramatically different.

The spike in examination requests is likely to lead to a significant increase in the average amount of time that it takes the Patent Office to examine a patent application, following a request. In the last year, the Patent Office appears to have received more than double the usual number of examination requests. It is therefore not surprising that since the start of this year, the Patent Office has generally only issued directions in cases where the five year deadline is approaching.

Under its Customer Service Charter, the Patent Office aims to ‘examine and issue first [examination] reports on applications for standard patents within twelve months of receiving the request for examination’. For patents granted in 2012, the average period was eleven months (according to the recently released Australian Intellectual Property Report 2013). It seems that patent examiners will have their work cut out for them if this period is to remain below two years.

Applicants wishing to have their patent applications examined sooner may request expedited examination. The Patent Office grants such requests where it is in the public interest (for example, if the invention relates to ‘green’ technology) or ‘special circumstances’ apply.

Acknowledgement
My thanks to IP Australia for supplying the relevant data.

By Geordie Oldfield

intellectual property   inventions   patents   procedures   protection

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