15 September 2013

Whither — or Wither — the Innovation Patent?

InnovationLast month the Australian Government’s Advisory Council on Intellectual Property (ACIP) released an ‘Options Paper’ in its ongoing review of the innovation patent system.  The options presented in the paper are threefold: do nothing; modify the innovation patent system in some as-yet unspecified way; or abolish the innovation patent system entirely.  I think that pretty much covers the full gamut of possibilities, and ACIP is now going back to the public seeking further input.

I have written about this review before, most recently in relation to IP Australia’s ‘Raising the Step’ proposal, in September 2012, to completely eliminate the distinction in inventive threshold between standard patents and innovation patents, such that an ‘invention’ and an ‘innovation’ would be required to meet exactly the same inventive step threshold.  As I wrote at the time, IP Australia’s publication of its consultation paper – which arrived complete with drafting instructions for the proposed amendments to the Patents Act 1990 – appeared to completely pre-empt ACIP’s review.

Submissions were due by 25 October 2012, in response to IP Australia’s consultation.  I made a submission, although it appears to have gone astray, since my name is not included among the list of submissions on page 46 of the ACIP Options Paper.  While I expected that the submissions would be published, and some further proposals or conclusions put forward by IP Australia, on the contrary the consultation seemed to disappear without trace.  In fact, ACIP’s Options Paper reveals that the submissions to IP Australia were passed on for consideration in the course of its ongoing review.

07 September 2013

IP Australia Confirms Impact of Reform on Patent Examination

FilesIn a news update sent out by email on 6 September 2013, IP Australia has confirmed what many of us already knew to be the case – that the rush of patent applications and examination requests in the lead-up to the commencement of the Raising the Bar reforms on 15 April 2013 has led to a significant blow-out in the examination backlog.

I presented figures back in April, shortly after the new laws came into effect, showing that in the final month under the former provisions over 6000 applications were filed (more than three times the long-term average filing rate), with half of those being filed in the week leading up to commencement. 

My Watermark colleague Geordie Oldfield subsequently published examination request numbers on the firm’s Intellectual Asset Management blog revealing an almost 40-fold increase in the rate of voluntary examination requests over the months prior to 15 April 2013.  In the final month, a total of nearly 22,000 examination requests were filed (around 1,700 in response to Patent Office directions, and over 20,000 voluntary requests).  This compares with a long-term average rate of under 1000 examination requests filed per month.

Additional 7-Month Examination Delay Expected

IP Australia has a Customer Service Charter, in which it sets out its commitments with regard to timeframes for completing various actions.  Currently, the Charter commits the Patent Office to issue a first examination report within 12 months of the date of filing of a request for examination.

IP Australia’s email update acknowledges the surge in examination requests, and goes on to explain that:

The main impact of this surge will be an increase in the pendency of first reports in coming years. Pendency is expected to increase in the December 2013 quarter, and is likely to exceed the 12 month customer service charter commitment by the end of April 2014. Based on projections, this could average up to 19 months at its peak during 2014, before returning to the 12 month commitment in early 2015.