22 February 2024

Patent Filings in Australia Fell Again in 2023, but Applications from China are Bucking the Trend

2023 falling. Image generated by Google Gemini.In 2023 the total number of standard patent applications filed in Australia remained above 30,000 for the third year running, despite a 2.4% drop in filings.  This follows a decline of nearly 0.5% in the previous year.  However, whereas the decline in new applications in 2022 was due to fewer filings by Australian residents (with a slight increase in foreign-originating applications preventing a larger fall), the drop in 2023 was the result of nearly 800 fewer filings by foreign applicants.  As always, a majority of new filings were national phase entries (NPEs) derived from international applications under the Patent Cooperation Treaty (PCT).  But, for the first time since 2016, the number of PCT NPEs fell – by 3.2% – offset somewhat by a 14% rise in new direct national filings.  The number of divisional applications also fell in 2023, by 7.3%.

In some (very limited) good news for Australia, patent filings by domestic residents increased by 2.6%, while the number of provisional applications increased by 5%.  Unfortunately, however, two thirds of the additional provisional applications in 2023 were filed without the professional assistance of a patent attorney.  (I say ‘unfortunately’ because, as I have shown previously, the outcomes for self-represented applicants are generally abysmal, so for the most part they are wasting their time and what little money they are expending on fees to IP Australia.)

The top 10 countries of origin of applications filed in 2023 were the United States, Australia, China, Japan, the UK, Germany, Switzerland, South Korea, France and Canada.  There were substantial drops in the numbers of applications filed by applicants from the US (-6.0%), South Korea (-10.5%) and Canada (-14%).  The largest growths in filings were from China (12.1%) and Japan (5.2%).  China is once again snapping at the heels of Australia from second position on the league table.  This happened previously in 2020, when I (mistakenly) predicted that Chinese filings might surpass domestic filings as early as 2021.  But while it is taking longer than appeared likely a few years ago, it seems inevitable that Australians will soon fall behind Chinese applicants as users of the Australian patent system.

Given that the innovation patent system is being phased out, it should come as no surprise that just 106 innovation patent applications were filed in 2023 (down from 191 in 2022), all of which were necessarily derived from existing applications filed prior to 26 August 2021.  Around two-thirds of applicants still filing for innovation patents are Australian (120 in 2022 and 67 in 2023).  Furthermore, a larger proportion of innovation patents are now being certified and made enforceable than has historically been the case, with 75 of those filed in 2022, and 31 of those filed in 2023, so far having been certified.  But with innovation patents now being a small, and shrinking, part of the Australian patent system, I shall have nothing more to say about them in this article, and I will drop the distinguishing term ‘standard’ when talking about ‘regular’ patent applications.

07 January 2024

The Major Australian Client at the Centre of David and Goliath Legal Battle Between Patent Attorney Firms

Breville invented the electric toasted sandwich maker in 1974As some readers may be aware (I have previously mentioned it only in passing) a firm in the IPH Limited (ASX:IPH) group – the market cap of which is A$1.56B at publication – is once again taking legal action against a recently-established firm and its founders, all of whom are former employees of Spruson & Ferguson (‘S&F’).  Earlier, IPH group firm Pizzeys had sued RnB IP and its two founders – formerly partners in Pizzeys at the  time of its acquisition by IPH – for alleged breach of non-compete, non-dealing, and/or non-solicitation restraints that were included in their employment contracts.  That dispute ultimately settled out of court and was finalised prior to trial, in September 2022, so we did not get the benefit of judicial consideration of whether the contractual restraints were reasonable and/or enforceable.

The startup firm on this occasion is GLMR, founded by Edward Genocchio (‘G’), Michelle Lee (‘L’), David Müller-Wiesner (‘M’) and Simon Reynolds (‘R’).  The firm was also, for a short period, known as LMW IP, which was established by ‘L’ and ‘M’ before they were joined by ‘G’ and ‘R’.  The action taken thus far against GLMR and its founders by S&F is an application to the Federal Court of Australia for preliminary discovery (case no. NSD6/2023), in which the GLMR parties are identified as prospective respondents in a potential future action.  This is the same strategy previously employed by Pizzeys against RnB IP.  In the RnB case, the preliminary application was contested, and resulted in a published decision of Justice Jagot ordering discovery.  In the present case, however, it appears that the parties have reached agreement on scope of discovery, with the corresponding orders made by a Registrar of the court (see orders made on 23 October 2023 [PDF, 135kB]).  While preliminary discovery was initially due by 29 November 2023, this has been extended by further orders to 5.00pm on 16 February 2024.

The discovery orders provide some insight into the nature of S&F’s prospective case against GLMR.  An impression of the impact that GLMR has had on S&F’s patent business can also be discerned from the public records of the Australian Patent Office.  In this article, I take a look at these two aspects of the matter.

02 January 2024

Disciplinary Decision Against Registered Attorney a Reminder of the Importance of Clear Communication and Record Keeping

Pursuit

Back in July, the Trans-Tasman IP Attorneys Disciplinary Tribunal (‘the Tribunal’) issued a decision in relation to a complaint about a registered attorney (‘the attorney’) by a client (‘the client’) in response to which the Trans-Tasman IP Attorneys Board (TTIPAB, a.k.a. ‘the Board’) commenced disciplinary proceedings, bringing nine charges against the attorney.  The full decision of the Tribunal can be found here [PDF, 364kB], while a separate ruling on the penalties to be applied can be found here [PDF, 223kB].  This decision is a ‘first’ in a couple of respects.  It is the first time the Tribunal has sat as a three-member panel (rather than a single decision-maker).  It is also the first time that charges have been brought against an attorney under the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018 (‘Code of Conduct’’).  Reference to specific provisions of the Code of Conduct has resulted in charges having a clearer basis and greater precision than may have been the case in past disciplinary proceedings.

There are, in this decision, three important messages – or, one would hope, reminders – for registered trans-Tasman patent attorneys.

First, an attorney’s obligation to ‘disclose to a client all information of which the registered attorney is aware that is materially relevant to work being undertaken for the client’ (paragraph 17 of the Code of Conduct) extends to information about the state of the law.  In this case, the attorney was obliged to inform the client about the difficulties inherent in obtaining patents for business methods (whether or not implemented using computer technology), and about the requirement to provide a sufficient disclosure of a claimed invention along with the potential adverse consequences of failing to do so.  The attorney was found to have satisfied the first of these two obligations, but not the second.

Second, an attorney’s obligation to ‘have appropriate competency’ and to carry out work that they undertake ‘with due skill and care’ (paragraph 14 of the Code of Conduct) includes ‘adequately and properly advising’ a client of anticipated legal risks or difficulties that may be encountered in obtaining IP rights.  Closely related to the first point above, in this case the attorney was obliged to properly advise the client of the significant risk that a patent application directed to a business method would be refused, and of the risks associated with failing to include a sufficient disclosure of a claimed invention in a patent application.  Here, the attorney was found to have satisfied neither of these two obligations.

Third, an attorney’s obligation to ‘maintain standards of professional practice as a patent attorney … that are courteous, ethical and well-informed’ (sub-paragraph 13(2) of the Code of Conduct) encompasses appropriate record keeping.  In this case, the attorney was obliged to keep adequate documentation of the advice that had been provided to the client, whether or not that advice was given in writing.  The attorney was found to have failed in this respect with regard to advice provided in relation to two patent specifications prepared on behalf of the client.

I recommend that all registered and prospective trans-Tasman patent attorneys read the full decision.  It is a credit to the profession that disciplinary proceedings are few and far between, but this makes the rare decisions that we do have all the more important.  What follows is my own overview and comments.

19 December 2023

IP Australia is Seeking Feedback on Proposed Fee Changes

Balancing the books

IP Australia has published a draft of its four-yearly Cost Recovery Implementation Statement (CRIS), which outlines proposed fee changes that would take effect from October 2024.  It is also taking the opportunity to review the hearing costs that may be awarded for Patents, Trade Marks and Designs.  Feedback on the proposals may be provided via submissions to IP Australia’s public consultation page.  Consultation is open until Sunday, 21 January 2024

In this article I will be looking in greater detail at some of the changes relating to patents in particular.  Stakeholders with an interest in any of the rights administered by IP Australia (patents, trade marks, registered designs and plant breeder’s rights) should take the opportunity to review the draft CRIS and submit any comments or concerns during the consultation period.  Briefly, on non-patent matters, I note that there are significant changes proposed to the fee structure associated with trade mark opposition hearings, with fees that increase with the number of grounds, beyond the first three, raised in a Statement of Grounds and Particulars (SGP), and with the number of prior trade marks, beyond the first ten, cited under section 44.  For designs, it is proposed to reduce application fees, while the fees for requesting examination will be slightly increased.  For Plant Breeder’s Rights, modest increases to application fees are proposed, however there will be more substantial increases in examination fees, and a doubling of renewal fees.

Registered trans-Tasman attorneys will want to take note that IP Australia is also proposing to increase registration renewal fees by A$50 across the board, which it says is required ‘to assist in covering the cost of administering the Trans-Tasman IP Attorney system.’

In the patents area, the headline changes, discussed in greater detail below, are: modest increases to most filing, examination and renewal fees; a doubling of opposition and hearing fees; a change in the timing (but not amount) of excess claim fees, from being charged at acceptance to (also) being charged at the time of requesting examination; a surprising (and perhaps unintentional) removal of innovation patent filing fees; and significant increases to the level of costs that can be awarded in contested proceedings, including patent oppositions.

17 August 2023

Profile of the Creator of AI ‘Inventor’ DABUS Raises More Questions About International Test Cases

A human and a robot staring at each other through a question mark (created with DALL-E 2) A profile of DABUS creator Dr Stephen Thaler, written by Tomas Weber and published by The Economist in April 2023, paints a picture of a rather isolated man – a septuagenarian, the product of a traumatic childhood, slightly paranoid, seemingly obsessed with his creation, and whose supportive wife seems resigned to the reality that he spends more time with his machines than he does with her.  To be clear, I have no way of knowing whether this is accurate.  I can only go on what is written in the article.  But assuming Weber’s account is a fair assessment, I would suggest that it raises additional questions about the ongoing global efforts – driven by Professor Ryan Abbott and his Artificial Inventor Project – challenging the legal barriers to AI inventorship and authorship.

The article, entitled The inventor who fell in love with his AI, is paywalled, so unfortunately you will need a subscription (or access to an institutional subscription) to read it.  I will try to hit some of the main points here, by way of review and commentary, but obviously copyright prevents me from reproducing large portions of the article.  The first point I would make, however, is that the title is somewhat misleading and sensationalist.  While it is liable to invoke notions of romantic love – à la Spike Jonze’ 2013 film Her – Weber in fact reports, in the depths of the article, that Thaler ‘has developed what seems like a genuine paternal affection for the AI, and recalled cooing to it gently in the early stages of its development’.  In Thaler’s words, “[i]t’s a child-and-father bond.”

More importantly, however, Weber’s profile of Thaler goes no way towards persuading me that DABUS is capable of true creativity or invention.  The article reveals that the output of the machine allegedly representing the ‘fractal bottle’ invention described and claimed in the DABUS patent applications was “food drink in fractal bottle increase surface area making faster heat transfer for warming cooling convenience pleasure”.  This is barely a coherent sentence, let alone an enabling disclosure of any kind of invention.  At best, it may serve to inspire a line of thinking that could result in the reader developing some inventive idea.  What is a ‘fractal bottle’?  How should the ‘fractal’ be deployed to ‘increase surface area’?  Would this invariably result in ‘faster heat transfer’, or are there other design considerations involved?  How does this provide ‘convenience’?  Or ‘pleasure’?  So many questions, to which a patent attorney would need answers in order to prepare a patent specification.  Who provides these answers?  Is it the machine, or is it the machine’s human owner who was the first to observe and be inspired by the machine’s output?  And, if the latter, then are they not the true inventor just as surely as someone who stumbled across inspiration by chance in the natural world?

There are, also, some more disturbing implications of Weber’s account.  Thaler is presented as someone who had a difficult childhood, and whose life experiences may have led him into a less-than-healthy relationship with technology.  Some of his beliefs about his machines, and their capabilities – and, indeed, about himself and his fellow humans – may, in Weber’s version of Thaler’s story, derive more from trauma and a search for meaning than from objective scientific evaluation.  Weber describes a man who is perhaps in failing health, who has experienced disappointments and perceived injustices, and who has a bleak view of his fellow men and a vision of a possible coming AI apocalypse. 

Yet this is the man who – with his creation, DABUS – has become the vehicle for the Artificial Inventor Project’s international campaign to achieve legal recognition for AI ‘inventors’.  The result of this campaign was only ever going to be a further series of disappointments and resentments, as jurisdiction after jurisdiction rejects DABUS’ claims to inventorship.  And for Thaler, each rejection is only further evidence of the world’s refusal to accept his claims of his machines’ profound creative capabilities.


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