01 November 2012

A Tour of IP Australia’s Latest Online Service Offerings

Photo © Andrew Dunn, http://www.andrewdunnphoto.com/, via Wikimedia CommonsAs of 29 October 2012, IP Australia has launched the second release of its eServices online portal.  The initial release, back at the end of April, enabled users to renew all IP rights (patents, trade marks, designs and plant breeder’s rights), to submit trademark registrations electronically, and to pay online by credit card (VISA or MasterCard).  The eServices portal also enables users to save requests, access a transaction history and update personal/contact details.  We reported the initial release in IP Australia Launches eServices Portal.

For patent applicants/owners, the second release of eServices adds the following transactions:
  1. patent applications (including examination requests, postponement of acceptance and selected amendment types);
  2. PCT National Phase Entry requests;
  3. multi-year patent renewals; and
  4. patent examination requests.
Non-patent transactions included in this release are:
  1. trade mark applications;
  2. TM Headstart (including Part 1, Amendments and Part 2);
  3. design applications (including requests for registration, examination and publication); and
  4. Plant Breeder's Rights Applications (Part 1).
Aside from expanding and simplifying IP Australia’s online services, there are two significant consequences which will flow from this eServices release, at least for patent applicants:
  1. it is now highly likely that online filing will become the ‘approved means’ for transactions from 1 December 2012, meaning that higher fees will be payable if applications are filed by any other means (such as fax or mail); and
  2. filing of standard patents online, in order to ensure payment of the lower fee, requires that entitlement details be available at filing.
This second point may catch some applicants unawares, particularly foreign applicants (or their agents), who are accustomed to being able to provide details of the basis for ownership of the invention and related rights much later in the examination process.

This article provides a quick tour of the new online services, and further explanation of the two issues noted above.

FILING OF STANDARD PATENT APPLICATIONS

Each transaction within the eServices portal has a series of screens, with a workflow diagram running along the top to indicate the steps in the process.

The initial screen for filing of a standard patent application is shown below.

Standard Patent Application

Firstly, you are required to select whether you are filing as an applicant (i.e. the prospective owner of the patent) or as an agent (e.g. a patent attorney acting for an applicant).  This is followed by applicant (typically the assignee of the application) and contact details.  The invention details are simply the title of the invention, and the inventor name(s).  Related applications are any provisional or foreign priority applications, or parents of divisional or additional applications.

The patent specification must be uploaded in parts.  A description part and a claims part are compulsory.  Uploading of an abstract, drawings and/or sequence listing is/are optional from the perspective of the online system, though of course they must be provided if they are to form part of the application.  The filing date of an incomplete application is determined in accordance with Regulation 3.5A, so if a part is omitted at this stage it may result in a later filing date being allocated, once the missing content is filed.

Acceptable file types are PDF (.pdf), TIFF (.tif), JPEG (.jpg), PNG (.png), XML (.xml), Text (.txt), DOC (.doc) or DOCX (.docx), though PDF is preferred.  Each part must be provided in a single file, except for drawings which may be submitted in multiple files.  There is a maximum total size per part of 20MB, which should not pose a problem for the vast majority of applications.  If any part of the submission is too large, it will have to be filed by other means, such as on paper or via CD- or DVD-ROM.  This may result in a delayed filing date, and additional fees if/when the alternative is not an ‘approved means’.  Further details of preferred and required characteristics of submitted documents may be found in IP Australia’s Electronic Business Rules.
Entitlement
When filing online, entitlement details must be provided.  There may be one or more forms of entitlement that must be declared.  In all cases, the entitlement of the named applicant to ownership of the invention and resulting patent will be required.  There are only two options offered:
  1. the applicant(s) may be the actual inventor(s), in which case they are always entitled to have a patent granted in their name(s) (see Patents Act 1990 paragraph 15(1)(b)); or
  2. the applicant(s) may ‘have entitlement from the actual inventor(s)’, e.g. by assignment, employment, or some other form of transfer or agreement.
There is no requirement in the Australian patent law or regulations, or in IP Australia’s practices, for the applicant to provide documentary proof of entitlement, or to specify precisely the legal mechanism by which entitlement was acquired.  However, lack of proper title is a ground for revocation of a patent (paragraph 138(3)(a) of the Patents Act), and a court may certainly insist on proof if entitlement is ever challenged!

Additionally, if the application claims the benefit of priority, or divisional/additional status, from an earlier application, the entitlement of the applicant to claim this benefit must also be declared.  This may be because the applicant was also the applicant in the earlier case, or the applicant may have acquired entitlement, such as by assignment or other form of transfer.  Again, no documentary proof is required.

Presently, an application may be filed by other means without entitlement details.  In this case, the applicant will be required to file a Notice of Entitlement before the application can be accepted.  However, as of 15 April 2013, when the remaining reforms in the Raising the Bar package come into effect, IP Australia will make it a mandatory requirement (under Regulation 1.8) that entitlement details be provided at filing.

This is a critical requirement of which all prospective applicants, both Australian and international, must start to consider, because after 15 April 2013 it will no longer be possible to secure a filing date without declaring entitlement details up-front.
Additional requests
There are a number of optional further requests that may be made through the online system at filing of an application:
  1. examination may be requested (an additional fee is payable, which may otherwise be deferred until a later date);
  2. if examination is requested, a request may be made that it be expedited (there is no additional fee, though a reason must be given, and expedited examination is at the Commissioner’s discretion);
  3. alternatively, accelerated examination under a Patent Prosecution Highway (PPH) program may be requested, in which case a PPH Request form must also be uploaded;
  4. the applicant may request postponement of acceptance (which prevents the application from proceeding directly to acceptance in the absence of any examiner objections, which provides an opportunity for later voluntary amendments to be made); and
  5. preliminary amendments may be filed, in which case they may merely be proposed amendments, for consideration by the examiner during normal examination of the application (no fee payable), or they may be formal amendments actually to be made to the application (a fee is payable, and the amendments will be examiner to confirm that they are permissible under section 102 of the Patents Act).
Finally, the system presents a summary of the application, and calculates the total fees payable.  The fees are paid online, in accordance with the Electronic Business Rules.

It is also possible to file provisional applications, and innovation patent applications via the expanded eServices portal.  With the appropriate modifications (or simplifications, in the case of provisional applications) the procedure is similar to that for standard patent applications.

PCT NATIONAL PHASE ENTRY REQUESTS

Currently, the minimum requirement for entering an international (PCT) application into the national phase in Australia is a one page form identifying the PCT application details (application or publication number), and a statement that the applicant wishes to enter the national phase, along with payment of the requisite fee.

In many cases, the eServices filing procedure will be just as simple. The initial screen for the process is shown below.

National Phase

Once a publication number or application number is entered, the system automatically retrieves the PCT application information from the World Intellectual Property Office (WIPO) records.  You are then required only to confirm that the applicant intends to request entry into the national phase in Australia, and to indicate whether the PCT application was originally filed in English.

If the PCT application was filed in English, then this may be all the detail that is required, depending upon the status of the international application.  If the application was not filed in English, the the system provides for a certified English translation to be uploaded.

If there were any amendments made to the application during the international phase (i.e. under Article 19 or Article 34 of the Patent Cooperation Treaty) then copies of these amendments will also need to be uploaded.  (In principle these are also available from the WIPO records, but if an application enters national phase early, or there is some delay in publication by WIPO, then they may not be accessible to IP Australia at this stage.)

Entitlement details and additional requests (for examination, preliminary amendment, and so forth) may also be provided, exactly as for standard patent applications.  In some cases, entitlement details may already have been provided in the PCT application.  If not, however, it will not be possible to complete the national phase entry procedure without providing this information.

MULTI-YEAR RENEWALS

IP Australia’s online renewal service now permits the payment of annual maintenance fees for as many years in advance as the applicant/patentee desires.  It is simply a matter of selecting the ‘paid to…’ date from a drop-down list of every anniversary from the present day until the end of the maximum patent term (i.e. typically 20 years from filing).

It is, for example, now possible to pay all future annuities due on a patent, at current fee levels and in today’s dollars, to ensure that the patent never ceases due to non-payment of an annual fee.  The following example illustrates a case in which every annuity from the fifth year to the final (19th) year – a total of A$9,600.

Multi-year renewal

To our knowledge, it is not common for patent holders to pay multiple renewal fees in advance.  Most annuity payment service providers (including renewal departments within patent attorney firms) operate on a year-to-year basis, which allows patent owners to allow patents to cease – halting ongoing maintenance costs – when/if they are not longer of value to the business.  This, in turn, serves the public interest in making the patented technology freely available earlier than the end of the maximum 20-year patent term.

However, there are examples of patents for which it might well be anticipated in advance that they will run their full term.  Obvious cases are some pharmaceutical patents, and some standard-essential patents – for example, many patents relating to DVD and MPEG-2 video compression technology have only two or three years’ term remaining, and continue to generate licence revenues many, many times greater than their annual maintenance costs.

Determining whether multi-year pre-payment is worthwhile would generally be a matter of weighing up the annual cost savings in service charges and/or maintenance overheads, against the time value of the up-front expense, adjusted for inflation and the likely annuity fee increases over the term of the patent.  Doubtless not an easy formula, however a cost of under A$10,000 to ‘set and forget’ a patent that is expected to earn tens of millions or more over its lifetime seems like it might be an easy decision to make.

EXAMINATION REQUESTS

As has already been discussed, an examination request may be made as part of the application process for a standard (or innovation) patent.  For applications already filed, and for granted patents, it is also now possible to request examination or re-examination via the eServices portal.

The process is quite straightforward.  You simply enter the application or patent number, allow the system to retrieve the details (presumably so that you can check that you have the correct number), and select the required examination type.

As noted above, it is possible to request expedited examination of a standard patent application, however IP Australia now requires that a reason be given, which was not the case until a change of practice earlier this year (see IP Australia Changes Expedited Patent Examination Practice).  Interestingly, the eServices platform provides a number of selectable reasons, much along the lines suggested in our earlier article, as shown below.

Expedited examination

If you select ‘other’, a text field appears allowing you to enter a bespoke reason in 500 characters or less.

Examination process

Further steps in the examination request process provide for upload of additional documentation, such as a Notice of Entitlement (if required), prior art search results which the requester (who may or may not be the applicant/patentee) wishes to bring to the examiner’s attention, proposed amendments for consideration during examination, request for postponement of acceptance, and/or other supporting documentation, e.g. in the case of a PPH request.

‘APPROVED MEANS’

Since 1 July 2012, a number of fees have included an incentive, in the form of a discount, to transact with IP Australia via ‘approved means’ (see IP Australia Fee Increases Coming, From 1 July 2012, and IP Australia’s own fee information page).

It has always been intended that the online eServices and B2B portals would be the sole ‘approved means’, however since the required functionality was not complete prior to the commencement of new fees on 1 July 2012 and 1 October 2012, the approved means have continued to include paper and facsimile transmission during a transition period (see IP Australia’s announcement here).

This transitional arrangement is due for review prior to 1 December 2012.  Unless significant deficiencies are identified in the online systems over the next month, it seems likely that these will be the only approved means come December.

In this case, any users of the system (including attorneys and agents) who do not switch to the online transaction mechanisms by this date will be paying higher fees for many actions.

CONCLUSION

Based on our brief testing, IP Australia’s new online eServices features certainly appear to be a pretty slick package.  We did not carry any transaction through to completion, but everything we did test worked as expected and advertised.

For some agents, attorneys, and other high-volume users of the Australian patent system, the transition to online transactions is going to involve a substantial investment in IT support, and process improvement.  We have looked here only at the eServices portal, which is suitable for low-volume transactions.  For larger operations, the B2B services are more appropriate, but require the generation of bulk transaction data in an appropriate format.  We understand that IP Australia is continuing to work with affected customers through the transition period.  The payoff in the long run will be significant improvements in efficiency and productivity, which should translate into lower costs to clients, while freeing up professional advisors to focus more attention on less tedious, higher value-add services.

For all users, the main procedural changes are the need to have entitlement details available at the time of filing a new application, and the fact that higher fees will apply in future if, for any reason, the online services are not employed.

While the system is relatively user-friendly, there remain a number of tricks and traps in the Australian patent process for the unwary or inexperienced applicant.  The best advice for anyone who is at all uncertain about the procedure is to seek professional assistance. 

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