|USPTO Director David Kappos|
turns green with envy at IP
Australia's successful reduction
of the examination backlog!
In any event, IP Australia proudly announced last week – in a news item modestly titled ‘Patents examination time slashed!’ – that:
The impact of a number of strategies has helped IP Australia to significantly reduce the average examination time for patents from an average of 16 months in 2009 to 11 months.
This is undoubtedly an impressive achievement, and a closer look confirms that the reduction in the backlog of pending applications (from over 75,000 in 2009 to 59,482 last week) has been achieved almost across the full range of technologies. As the table below – taken from IP Australia’s response time statistics (available here) – shows, all applicants except those with applications allocated to biotechnology subsection A2 should have cause to be pleased with the performance of the Patent Office.
Time between request for examination and issue of first examination report (3 Month Rolling Average time in months)
|Plant Breeders Rights & Biotech (A1)|
|Chemical/ Biotechnology (B2)|
|Chemical Engineering (B1)|
|Electrical/ Medical (B4)|
|Melbourne Patent Examination Centre (A5)|
And if this is not impressive enough, IP Australia’s goal is to reduce the average examination time further by the end of 2011 – to a mere nine months.
DOES IP AUSTRALIA DESERVE ALL THE CREDIT?While not wishing to take anything away from IP Australia – or the examiners who are no doubt working hard to reduce the backlog of applications awaiting examination – we do not think that IP Australia is entitled to take all of the credit for this outcome.
It seems to us that one of the ‘strategies’ that IP Australia credits for the reduction in the backlog is the use of foreign examination reports, or FER’s. Section 18.104.22.168 of the Examiners Manual sets out the current guidelines for use of FER’s by Australian patent examiners. These guidelines are designed, quite rightly, to avoid duplication of work by the Australian Patent Office. For example, one of the directives is:
If there are granted family members, for example US, GB or EP family equivalents, and the Australian claims are identical to those in the granted family equivalent and appear to be prima facie valid, accept the application.
Putting aside the implication that an Australian examiner could not possibly conduct a more thorough search and examination than a counterpart in the USPTO, UKIPO or EPO, this represents a huge potential time and work saving strategy for the Australian Patent Office.
When a FER is adverse, the guidelines include the following advice:
- Use FER as first report if FER includes discussion or explanation of issues raised and issues are relevant and sustainable under Australian law.
- If a FER cannot be used because the issues raised are not sustainable and relevant under Australian law follow the clear FER instructions…
It is therefore enormously beneficial to IP Australia that the Australian patent law comprises a requirement for an applicant to expressly request examination, and that this can be delayed, in most cases, for more than four years from the effective filing date of the application. Even the chronically underfunded and overburdened USPTO is still managing to issue first office actions within this timeframe, so Australian patent examiners are rarely faced with cases having foreign equivalents, but no FER.
SO WHY SHOULD DAVID KAPPOS BE GREEN WITH ENVY?If USPTO Director David Kappos is indeed envious of IP Australia, then it should not be merely because the Australian backlog is significantly shorter than his own.
Rather, Mr Kappos might quite rightly be envious because Australian examiners frequently have the benefit of work performed (and paid for) by the USPTO, whereas the converse is rarely true. Indeed, we doubt very much that we shall live to see the day on which US patent examiners are instructed that if the Australian Patent Office has granted a patent, and the US claims are identical and prima facie valid, the US application should be allowed. This is tantamount to ceding sovereignty over the patent system to another nation!
Let us be clear – we are not suggesting that IP Australia’s practice in relation to FER’s is wrong, nor are we suggesting that any of this has an adverse impact on patent quality in Australia. Quite the opposite, in fact. We have the greatest respect for the USPTO and EPO examining corps, and do not doubt for one moment that their skills and resources are at least the equal of those of Australia’s examiners. But the simple fact is that the benefit gained by IP Australia from the work product of its foreign counterparts is far from reciprocal.
IP Australia deserves credit for implementing strategies that benefit patent applicants in Australia. However, in terms of actual substantive examination work carried out, the credit for subsequent reduction in the backlog in Australia should, we think, be shared with the foreign patent offices that are, in effect, providing search and examination services to the Australian Patent Office.
Ultimately, we think that patent applicants operating in a global market would be better served by agreements between national patent offices, and harmonisation of laws and practices, that result in genuine work-sharing. For an applicant with a substantial market in the US, for example, the ultimate efficiency of examination of its Australian application is of minor significance compared to the delay in examination of its corresponding US application.