Our conversation was recorded and transcribed and – being quite lengthy – will be reproduced in a series of posts here at Patentology. Both the Commissioner and myself took the opportunity to edit the transcript slightly before publication (largely, speaking for myself at least, to appear somewhat more coherent than may have been the case on the day), however I can assure readers that the final transcript is a faithful reproduction of the discussion.
For those who have not met her (as I had not) I can confirm that the Commissioner is, unsurprisingly, an intelligent and articulate woman, with a keen interest in the patent system, and its role in fostering innovation and economic development. She is also – and I point this out as a statement of fact, not as any criticism – a public servant who is answerable to the government of the day. It is also worth pointing out, for those international readers who may have missed the Daily Show’s coverage of the Australian election campaign, that we are effectively between governments right now, and the Commissioner does not actually know to whom she will be answerable in a month’s time!
In the first part of the conversation, I got to know a little bit more about the Commissioner of Patents – about her background (she was originally a chemical engineer working with steel); about how she came to the role of Commissioner; and about what her job involves on a day-to-day basis. As you will see, it is quite a significant management role, equivalent to running a fairly decent-sized company division in the private sector, with the addition of responsibility to a Minister of the Government. That part of the discussion is reproduced in this post.
In the second part of the interview, we spoke about the law reform process – what has already been achieved through the Raising the Bar amendments, the further reforms which are currently ongoing, and the opportunities for future reform. In the third part, we discussed some contentious topics in the area of patent-eligibility of subject matter such as computer-implemented inventions, business processes, and genetic materials, as well as the challenges facing the patent system over the coming years. These parts of the discussion will be reproduced in two further posts over the coming days.
So, without any further ado, the interview…
Part 1: Getting to Know the Commissioner of PatentsFatima Beattie: How does the Patentology blog business model work for you – what do you get out of it?
Mark Summerfield: I get an awful lot of networking in Australia and globally, and an awful lot of exposure and publicity which, since starting it, I’ve done everything from being called at 7 o’clock in the morning and interviewed by Red Symons on his breakfast show here to appearing via Skype for the Wall Street Journal in Asia, and articles that I’ve been invited to write. Just the opportunities for that sort of networking and exposure are enormous. I also get a lot of interaction back from people who read and just doing it makes sure I’m on top of a whole lot of things that I probably wouldn’t make the time for if I was just doing it for personal interest.
FB: Must be time-consuming to keep up with all the issues.
MS: Well it is, but I enjoy doing it as well. If I didn’t enjoy it… So, yes, that’s a factor as well.
Anyway, thank you for speaking to me today because I know it’s often difficult. Particularly in an election period like this, you’re probably worried about what’s happening with the politics, and what you can say and can’t say, with a lot of things to be careful of…
FB: As always, we’ll be impartial.
MS: These days we sort of expect to be able to find out everything about someone online, whether it’s a CV on LinkedIn or… you Google me you’ll find far more information than I probably want most people to find these days!
But your time prior to IP Australia is a bit of mystery through all of those normal channels. I managed to find out you became Commissioner of Patents in 2003. You came to IP Australia to do that – as far as I can tell you didn’t come up through the ranks there. You’ve been Deputy Director General since 2007. You have a chemical engineering background correct? And a Masters Degree from the UK. And you’ve got a Diploma from the Australian Institute of Company Directors which suggests some commercial interests and experience somewhere in the past.
So, what were you doing before 2003, and how did you get into IP and how did you get to be in the role of Commissioner of Patents?
FB: I graduated from RMIT as a chemical engineer. My first job was BHP Newcastle Steel Works [MS: which closed in 1999] as a chemical engineer involved in process development. I was in what used to be called the Combustion Department looking at improving processes, developing programs etc.
From BHP I joined – by accident in effect – the Munitions Filling Factory at St Mary’s, and that’s how I became a public servant. In the Munitions Filling Factory I was a development engineer working on process development, technology transfer into the company, developing new products for the military.
From there I joined the head office of what used to be known as Department of Defence Production. Again technology transfer, working with our military partners in UK, Canada and the US in terms of importing technology for the Australian services. Then I joined the Navy Office doing something very similar. I was a design authority for naval conventional ordinance. I did my Masters in the UK sponsored by the Navy Office.
Then I joined Quality Assurance followed by DSTO [MS: the Defence Science and Technology Organisation] as the Industry Liaison Manager again working on technology transfer and then I became Senior Executive Officer in what used to be called the National Registration Authority [MS: now the Australian Pesticides and Veterinary Medicines Authority]. That’s the TGA equivalent for Agricultural and Veterinary Chemicals, where I was the National Compliance Manager. From there I applied for the Commissioner of Patents as it was known at the time, and transferred at level into what was in fact a bigger job – in terms of number of staff and budget etc.
MS: Did you know about patents and intellectual property before you did that?
FB: I didn’t know patents in detail, but I certainly knew about the patent system. In the DSTO I was engaged in patenting issues, and intellectual and industry policy. So I’ve had an interest in technology and technology transfer I guess throughout my career and in product development as well. So, not an understanding of the nitty gritty details of novelty, inventive step, description of patents but definitely in terms of technology and the benefits of intellectual property for innovation and promotion of success within industry.
MS: Since then, roles and responsibilities in IP Australia have changed. The Patents Act still requires there to be a Commissioner of Patents to do certain things, but the organisational structure of IP Australia is quite different now. Your official position in that structure is Deputy Director General. And I noticed that two or three years ago – at times when presumably you weren’t available – other people signing certificates and things changed from being ‘Acting Commissioner’ to dropping the ‘Acting’. So, it’s obviously I guess more a statutory role now as opposed to an actual formal position within the Office – is that how it works?
FB: It’s always been a statutory role except that the title of the position that the person occupied was also then called Commissioner of Patents. So when the organisation reorganised and a Deputy Director General position was created, it was decided that all the statutory roles would be held by the Deputy Director General position, but that the title of the position would be Deputy Director General. So when I’m absent from work, we have someone acting in the position of Deputy Director General, but they are in fact exercising the statutory role of the Commissioner, not acting as a Commissioner of Patents in that role.
MS: So they act as Deputy Director General, but they are the Commissioner for that period?
FB: That’s right. And they are the Registrar of Plant Breeders Rights, Registrar of Trade Marks and Registrar of Designs as well.
MS: And what do you do in that role day-to-day…?
FB: In the Deputy Director General's role?
MS: Yes, what does your day consist of?
FB: Every day is different and the role itself is really a leadership and management role. It is a business management role, and the statutory positions are associated around the decisions that we make.
So I don’t, for example, exercise the Acceptance delegation on a daily basis. That’s done by my delegates. As the Deputy Director General I’m a facilitator – making sure that the people we have, have the correct skills and appropriate competencies to be able to exercise those legal roles effectively. My role as the Deputy Director General is to look after the systems, the staff, the business as such.
I have responsibility for 700 staff. I do that with the assistance of three General Managers. We process about 104,000 applications annually, we do 53,000 acceptances or registrations annually. So as you can see it’s quite a big business that we have to operate and make sure that it’s funded, planned for and that we have the resourcing plan in place the next four or five years rather than on an annual basis.
The role is also about making sure that we do the right things, that we do them well, that we engage with our stakeholders and our customers, that we listen to what they have to say, that we amend our processes to fit with what the clients really need from us, and of course our major client is our Minister, so we need to make sure that the Minister is well-informed, and that we’re exercising the will of the people which is defined through the Minister.
MS: And do you get out amongst the examiners, out on the floor, as well?
FB: Yes, we do have an engagement approach. Everyone wants to be led by people who want to go and see them and give them attention. So yes, there is a degree of that. Never enough though. I’d like to be doing that 90 per cent of the time, rather than the 10 per cent that I do at the moment, but you always need to try and make an effort to contact, maintain contact with the examiners, and the other staff that comprise IP Australia.
So that is the end of Part 1 of the conversation. In Part 2 I talk to the Commissioner about the law reform process, how the Raising the Bar legislation came about, with broad-based political support, and the work still being done to improve and update our laws and practices.