11 April 2013

Australian Training for Overseas Patent Examiners

Economics If you are an Australian taxpayer reading this article, you can give yourself a pat on the back and feel a warm glow of satisfaction – your tax dollars are helping to enhance the skills of patent examiners in Indonesia, Malaysia, Philippines, Kenya and the African Regional Intellectual Property Office (ARIPO)!

On Monday, 8 April 2013, IP Australia announced the launch of its Regional Patent Examination Training program (RPET).  The program is conducted largely online, via an e-learning platform developed by IP Australia, and involves one-on-one training and support for overseas examiners, provided by experienced Australian examiners.

The IP Australia announcement indicates that RPET is a ‘significant activity’ of the ASEAN-Australia-New Zealand Free Trade Agreement Economic Cooperation Work Program (AANZFTA ECWP).  Australian Government funding for this program is provided via AusAID.

‘Upon completion of the program,’ says IP Australia, the participating overseas examiners ‘will be able to consistently examine to the standards expected of their Australian counterparts.’

Benefit to Australia

Considering that Australian government funds are being expended on the RPET program, taxpayers may legitimately be wondering: what is in it for us?

Of course, I would not deny that assisting our neighbours in the Asia-Pacific region, and the developing nations of Africa, is a laudable endeavour in itself.  However, there are many ways in which we can (and do) provide aid and support to other countries.  Training patent examiners is probably not very high on most people’s lists of regional development priorities.

In this week’s announcement, IP Australia explains the costs and benefits as follows:

This is the single largest international activity we have undertaken in over a decade. Assisting other IP offices to enhance their examination standards will, in time, lead to higher quality and more consistent granted IP rights.  This means Australian exporters can have greater confidence in the validity and protection of their IP rights in overseas markets.

A similar conception is expressed in slightly different terms in Chapter 11 of the
Annual Report 2011-12 of the Department of Industry, Innovation, Science, Research and Tertiary Education (page 246):

The program will enhance patent examination standards in participating offices and encourage the development of the patent system in other countries to occur in a way that facilitates access for Australian exporters.

A somewhat less-obviously self-interested discussion is to be found in Component 6 of the Agreement establishing the AANZFTA ECWP:

The development of strong IP regimes throughout the ASEAN region is a sound underpinning for international trade to be promoted through the AANZFTA. If IP rights are consistently protected, investors and traders will have increased confidence to operate within the region.

The form of assistance may include direct training for IP examiners and other government officials, IP judges, patent attorneys, academia and the business community…


I agree that assisting less developed nations to improve their capabilities is a worthy exercise.  However, I cannot help feeling that there is an element in the RPET program of developed nations (and the World Intellectual Property Organisation) imposing their particular vision of a ‘quality’ IP system upon the recipients of this largesse.

The ‘official line’ on the role of IP in developing economies is that ‘IP rights create a secure environment for investment in innovation and provide a legal framework for trading in intellectual assets’ and ‘that investment in knowledge creation, and the maintenance of a robust and balanced IP system, should feature prominently in any strategy to ensure sustainable economic growth’ (WIPO Director General – and Australian – Francis Gurry, speaking on 12 March 2013 at a conference in Dar es Salaam).

This notion that a suitable IP system is one which is ‘robust and balanced’ also appears in the Agreement establishing the AANZFTA ECWP, which states that a ‘comprehensive programme of support will be put into place to assist ASEAN Parties to [among other objectives] improve capacity to develop sound and balanced IP frameworks and systems’.  The implication being, I gather, that the non-ASEAN parties (Australian and New Zealand) already have such frameworks and systems in place, and know how it all should be done.

This is very much a ‘developed nations’ view of IP.  There is, in fact, a long history of developing nations implementing IP systems that are not ‘balanced’ in the sense presumably intended in the above statements.  For example, the very first formal patent statutes, the Venetian Statute on Industrial Brevets of 1474 and the British Statute of Monopolies 1623 both required only local novelty, i.e. that an invention need only be new within the ‘Dominion’ or ‘Realm’ in order to be patentable.  In other words, a patent monopoly could be given for ‘importing’ a technology already known elsewhere in the world.  This is, when you think about it, a very effective way to provide incentives for investment in the development of industries within a developing nation.  Clearly, one has to catch up with the rest of the world before being in a position to start innovating ahead of it.

However, a ‘local novelty’ rule would not be considered ‘sound and balanced’ by the current standards of developed nations, even though its widespread elimination has been a relatively recent event.  The Australian Patents Act 1952 maintained a local novelty standard, and the New Zealand Patents Act 1953 continues to do so (until it is eventually replaced by the pending Patents Bill).  In many nations, the transition to a requirement for full ‘global’ or ‘absolute’ novelty has passed through a stage of so-call ‘relative novelty’, in which a global standard is applied in the case of prior publication, whereas a prior use (commercial or otherwise) must occur within the jurisdiction in order to invalidate a patent.  The United States maintained such a system right up until the new first-inventor-to-file provisions of the America Invents Act came into force on 16 March 2013.

These are, of course, matters of substantive patent law, and not of examination practice and quality.  But when training of examiners is combined with other forms of influence, including treaties such as the TRIPS Agreement and the Patent Law Treaty, there is certainly a sense that more-developed nations are in a strong position to impose their IP agendas upon less-developed nations.

This is not to say that Australia should not be contributing to the provision of quality training to overseas patent examiners.  I would only question whether this is being done with appropriate sensitivity to the differing circumstances of less-developed nations, or whether it is based upon the common theory that since innovation is essential to a strong modern economy, modern western-style innovation and IP rights systems are inherently beneficial to developing nations.  Personally, I remain unconvinced that this is so.

Image Copyright (c) 123RF Stock Photos


Andy M said...

Thanks for this article. My first reaction on learning this development was that IP Australia is trying to do what the USPTO has also been trying to do in developing countries like China and India to superficially impose a similar (and possibly convenient) patentability standard in their countries of interest. See here http://www.uspto.gov/news/pr/2008/08-01.jsp

As you suggest, In the long term it does make good economic sense for Australia to have a seemingly similar patentability standard in countries of interest in the Asia-Pacific region. However, given that the USPTO and the EPO have already expended considerable resources in imposing such standards on the relevant countries, I am not sure if Australia has missed the bus. It seems to me that IP Australia's decision is not timely.

Furthermore, the point of differing circumstances leading to different outcomes in developing countries is a very good point. The recent Novartis decision coming out from India is a classic example of differing standards of patentability being governed by the economic and social fabric of a country.

Mark Summerfield said...

Thanks for your comment, Andy.

It seems to me that the role being played here by IP Australia is complementary to that of other organisations (including not only the USPTO and EPO, but also WIPO and the WTO). It is one thing to influence the substantive patentability standards enshrined in legislation, and another to ensure that those standards are being effectively and consistently applied across different patent offices. WIPO is, in fact, also involved in this initiative, in that it is covering the costs of ARIPO participation in the program.

In this case, the standards in which the overseas examiners are being trained are substantially those of the PCT, which means that they should be broadly consistent with the EPO approach, anyway. However, a major element of examination skill (and quality) is the effectiveness of the prior art search. If a search fails to identify the most relevant prior art, then the applicable standards of novelty and inventive step are largely irrelevant. This is an area in which socially and culturally 'neutral' training can certainly be beneficially provided.


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