19 February 2017

What IP Australia Does Not Tell You: If You Want a Patent, You Should Hire a Patent Attorney!

Seated ProfessionalThe next time anybody asks me what they need to do to obtain a patent for something they have invented, I shall tell them just one thing: first, find yourself a patent attorney.  Not me, obviously, since I am not currently providing patent attorney services to inventors... but a patent attorney nonetheless.  If they query the cost, I shall simply say that if they cannot afford a patent attorney, then maybe they should forget about patenting their invention.  If they object that there must surely be something they can do without the assistance of a patent attorney, I will reiterate that they need to engage a patent attorney, and that is the one and only piece of advice I have for them.

This is not the advice I have always given in the past.  When working as a patent attorney in private practice myself I would sometimes encounter people who were clearly unwilling or unable to pay for an attorney.  Taking the view that self-help is better than no help at all, I might have directed them to IP Australia’s web site and other resources designed to help them to get started by themselves.

Never again will I encourage potential self-filers in this way.  It is a great disservice to them, and runs directly contrary to their interests.  As a rational person, I have allowed my views to be changed by actual evidence!  Specifically, I have crunched the numbers to assess how self-represented applicants actually fare at the Australian Patent Office, and the statistics are not merely bad, they are appalling.  In a nutshell:
  1. self-represented ‘small entity’ applicants file about half as many provisional applications in Australia as do applicants with external or in-house attorneys, but less than 7.5% the number of standard patent applications claiming priority from those provisional applications;
  2. the same category of self-represented applicants file 15% more innovation patent applications than applicants with attorneys, but seek certification of those patents in only around 17% of cases, of which over 60% are rejected and cease as a result;
  3. innovation patent applicants with attorneys request certification at double the rate of self-represented applicants, and successfully achieve certification in 83% of those cases; and
  4. when self-represented applicants file standard patent applications, these result in accepted claims just under 23% of the time, compared with a little over 53% of applications filed by applicants with attorneys.
Overall, when I look at Australian patent applications filed by small, self-represented, applicants, I see at least 90% of all provisional applications, 77% of all standard patent applications and 95% of all innovation patent applications ultimately resulting in absolutely no enforceable rights whatsoever.  And this does not account for the fact that even where enforceable rights are ultimately obtained, they may be of minimal commercial or legal value, considering that the applicant may have had only a limited comprehension of what they were doing in the course of examination.

All of this is not only wasteful and harmful to the individual applicants involved, it is associated with a social cost representing a negative contribution to the Australian innovation system.  I therefore cannot understand why IP Australia, which states that its vision is ‘to have a world leading IP system that builds prosperity for Australia’, provides only the most minimal suggestion that applicants might benefit from engaging professional assistance.  It is clear that Australia’s patent-issuing authority should take a leaf from the playbooks of its peers in (at least) the USPTO, European Patent Office, UK Intellectual Property Office, and Canadian Intellectual Property Office, and clearly inform prospective applicants that hiring a patent attorney is practically essential, or at least highly recommended, in order to obtain a commercially worthwhile outcome.

Motivation for Examining ‘Self-Filers’

I decided to look at the performance of self-represented applicants after reading an article on InnovationAus.com about the Australian Productivity Commission’s recent report on the country’s IP system.  In this article, Sydney-based patent attorney Chris Baxter is quoted saying of the report (among other criticisms) that:

“It says Australia has a ‘proliferation of low quality patents’.  Where? Which ones? Who decides which ones are low quality?  If this is in fact the case, it is because IP Australia is encouraging Australian innovators to try to write and file patents themselves. Such patents are naturally of a low quality,” Mr Baxter said.  “IP Australia’s so called ‘online assistant’ Alex discourages innovators obtain professional advice for their patent lodgement.”
 
This prompted me to visit IP Australia’s web site, putting myself in the shoes of an inexperienced prospective patent applicant, to see what such a person would discover about the process.  I started by asking Alex-the-virtual-assistant ‘how do I apply for a patent?’  After a couple of further questions, and clicking on a few links, I eventually reached a page entitled ‘What to include in your application’ that actually mentions patent attorneys.  Specifically, with regard to patent claims it says ‘patent attorneys are experts at writing claims, which is why you may consider using their services’, and more generally (at the bottom of the page) that ‘the patent application process can be complex, so you may consider seeking assistance from a patent attorney.’
 
This is rubbish.  I will get to the details of the data shortly but, as I have already indicated, for the overwhelming majority of prospective applicants, ‘seeking assistance from a patent attorney’ is not something that they ‘may consider’.  It is an essential step without which they might as well flush their application fees, and whatever their own time and effort is worth, straight down the toilet!

IP Australia’s Position

I put my views out on Twitter:
IP Australia, to their credit, responded with the following tweets:


I get it.  I really do.  They are trying to be fair, neutral, and unbiased, and to avoid promoting any particular proprietary interests.  They mean well, but they are wrong.  They are giving hopelessly inadequate advice.  Their own data should tell them that they need to be encouraging prospective applicants to seek professional assistance.

What Other IP Offices Say

If IP Australia were to promote the benefits of professional assistance more strongly, they would not be alone.  In fact, right now they are the exception among their peer agencies.  The USPTO tells prospective applicants that:

Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.
 
Most inventors employ the services of registered patent attorneys or patent agents.

 
The UK Intellectual Property Office says:
 
Your chances of obtaining a useful patent are much greater if you use a patent attorney. They will use their specialist skills to draft the application properly.
 
The Chartered Institute of Patent Attorneys (CIPA) can help you locate an attorney in your area.

 
The European Patent Office explains that:
 
Another important role will be played by your patent attorney. IPR is a complex area of law that holds many dangers for inexperienced inventors. A patent attorney's advice will be helpful when you are planning an effective IP protection strategy, and essential if you decide to patent your idea. (Emphasis in original.)
 
And the Canadian Intellectual Property Office advises that:
 
Preparing and prosecuting (following through on) a patent application is a complex job. Prosecution involves corresponding with CIPO, taking actions set out in the Patent Act and Rules within strict timelines, making any necessary changes to the application and fixing the legal scope of the patent protection. All this requires a broad knowledge of patent law and Patent Office practice—knowledge you can expect from a registered patent agent.
 
A trained patent agent will make sure your application is properly drafted so your invention is adequately protected. Hiring such an agent is not mandatory but we highly recommend it.


It is therefore clear that other patent offices see nothing inherently wrong with promoting the benefits of engaging a patent attorney.  Indeed, they positively encourage it.

Australian Application Data Analysis

In order to evaluate the relative outcomes for self-represented patent applicants at IP Australia, I turned once again to the Intellectual Property Government Open Data (IPGOD) 2016 data set.  (For more details of this data set, see my earlier article on attorney firm market share.) 
 
I extracted data corresponding with all applications filed by Australian applicants (or, where there are multiple applicants, having at least one Australian applicant) with filing dates on or after 24 May 2001.  I chose this date because it was when the innovation patent system commenced operation, so that I would have data consistently representing all types of currently-available patent applications over the entire period analysed.
 
I then divided the data into two categories:
  1. applications filed by self-represented ‘small entities’, defined (according to the criteria established for the IPGOD data set) as individuals and organisations with fewer than 200 employees; and
  2. applications filed by applicants of all sizes represented by external registered patent attorneys, combined with applications filed by self-represented ‘large entities’, which typically have their own in-house attorneys.
For convenience, I will refer to these two categories of applicants as self-filers and represented-filers respectively.

Results

For the self-filers I found that:
  1. there were 26297 provisional applications, 7900 innovation patent applications, and 2818 standard patent applications (via direct filing or PCT national phase entry) filed between 24 May 2001 and the end of 2015;
  2. of the innovation patent applications, 911 claimed priority from at least one prior provisional application, while 1399 (i.e. just under half) of the standard applications made a priority claim;
  3. of the standard patent applications, just 22.6% ultimately resulted in any accepted/granted claims;
  4. the top causes of standard applications lapsing were failure to request examination (34%), failure to pay application fees in the first place (17%), failure to pay annual maintenance fees (16%), and failure to overcome examination objections (14%); and
  5. examination of innovation patents was requested in just 1309 cases (16.6%), of which 508 were subsequently certified (i.e. made enforceable) while 801 ceased after the applicants failed to overcome examination objections.
Outcomes for the represented-filers were significantly better:
  1. there were 79743 provisional applications, 6876 innovation patent applications, and 21234 standard patent applications filed by these applicants over the same period;
  2. of the innovation patent applications, 2868 claimed priority from at least one prior provisional application, while 18684 (i.e. 88%) of the standard applications made a priority claim;
  3. of the standard patent applications, over half (53.2%) resulted in accepted/granted claims;
  4. the top causes of standard applications lapsing were failure to pay annual maintenance fees (31%), failure to request examination (30%), and failure to overcome examination objections (20%); and
  5. examination of innovation patents was requested in 2353 cases (34%), of which 1949 (83%) were subsequently certified while 404 ceased after the applicants failed to overcome examination objections.

Comments

The outcomes for the self-filers are abysmal.  Over 90% of all provisional applications filed by this group result in no further action.  A majority of both standard and innovation patent applications make no priority claim, indicating that these applicants are unaware of the considerable financial and strategic benefits of commencing the patenting process with a provisional application.  The vast majority of standard applications – nearly 80% – produce no outcome of any value whatsoever.  And despite filing 15% more innovation patents than the more numerous represented-filers, self-filers are much less likely to seek certification and, when they do, they fail nearly two-thirds of the time.

By contrast, among represented-filers about a quarter of all provisional applications form the basis for a subsequent priority claim.  More significantly, 88% of standard patent applications and 42% of innovation patents filed by this group make a claim to earlier priority.  Over half of the standard patent applications result in accepted claims, and where represented-filers elect to have their innovation patents examined (i.e. in about a third of cases) they are successful the overwhelming majority of the time.

And keep in mind that I am only looking here at filings by Australians in Australia.  For those applicants with ambitions to export their goods or services, and wishing to obtain patent rights in other markets, the problems of proceeding without appropriate professional advice and assistance are further multiplied.

Conclusion – Like It or Not, Professional Assistance is Essential

Just to be clear, there is absolutely nothing wrong with abandoning an application or patent if and when it becomes apparent that it, or the invention that it covers, does not have the value originally hoped-for, and that the costs of continuing outweigh the potential benefits.  For 75% of applications to be culled at the provisional stage and a further 50% prior to grant of patent rights, by fully-informed applicants, strikes me as entirely reasonable.  The self-filers in my analysis, however, are performing at significantly below this level and, sadly, too many of them constitute a dead weight on the system.

The poor outcomes achieved by self-filers represent a horrible waste and an abject failure – for the applicants themselves, for innovation and IP policy, and for the Australian community at large.  This substantial segment of ill-informed users of the Australian patent system is dragging it down, and contributing significantly to negative evaluations such as that of the Productivity Commission, and IP Australia’s own earlier (adverse) report on The Economic Impact of Innovation Patents.  And in the midst of all this, IP Australia is failing to do what is plainly the right thing, which is to advise prospective applicants not to proceed without seeking appropriate professional advice.

I have no doubt that in an ideal world the patent system would be simple and transparent and accessible to everyone without the need for relatively costly professional advice.  But we do not live in an ideal world.  We live in a world populated by billions of people with all sorts of competing interests, and in a country whose laws – whether they relate to taxation, crime or intellectual property – have evolved over time to try to balance those many interests.  I have spent over 14 years in the patent attorney profession, and I am still learning (which is, I guess, why they call it ‘practice’, or ‘practise’, I never can remember which).  To believe that a rank beginner can be instructed on how to prepare and file their own patent application via a web page published by the very authority responsible for examining and granting patents is at best na├»ve, and at worst grossly irresponsible.

I call on IP Australia to grit its teeth, bite the bullet, grasp the reins, take the plunge – choose your metaphor – and fulsomely embrace the benefits of promoting the services of Australian patent professionals to its prospective customers.  In the end, it is in everybody’s best interests.

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