19 January 2021

Australian Patent Filings Fell in 2020, Despite Significant Growth (Again) in Applications from China

New Year 2021In 2020, the number of standard patent applications filed in Australia fell by 1.8%, to 29,240 from 29,786 in 2019.  Much of this decline can be attributed to domestic applicants, which filed around 10% fewer applications in 2020.  On the other hand, Chinese applicants filed nearly 20% more applications in 2020 than in 2019, falling only 48 applications short of the number filed by Australian applicants.  US residents remained the top users of the Australian standard patent system, being named on 13,037 applications, which was a 1.6% decline on 2019.

Among the leading origins for Australian patent filings, China, South Korea, the UK and Japan all increased their application numbers over 2019, while Canadian, Australian, French, and Swiss applicants filed substantially fewer applications.  The leading applicant, for the second year running, was Chinese telecommunications device manufacturer OPPO, which increased its new filings by 39%, to 435, eclipsing second-placed LG Electronics with 236 applications.  Rounding out the top three was Huawei, with 229 new applications in 2020.  Huawei’s heavy investment in Australian patents is interesting, considering that the company is barred from supplying advanced equipment for use in Australian telecommunications networks due to ‘security concerns’.  Perhaps it may yet expect to derive income from the Australian market in the form of licensing revenues from its standards-related and other patents.

The picture is very different for innovation patents – the second-tier rights that are now well into their final year of full availability before being phased out.  Chinese applicants seem to have treated the impending abolition of the system as if it is a ‘going out of business’ sale, increasing filings by over 400% and becoming by far the largest users of innovation patents.  Indian applicants seem also to have caught on, rather late in the piece, to the advantages of a system that enables a patent to be granted without the time and expense of substantive examination, with applications originating in India jumping from just eight in 2019 to 529 in 2020 (growth of over 6500%, if such a measure were meaningful off this small base).  Some US applicants also seem to have jumped at the final opportunity to obtain innovation patents, nearly doubling their filings from 86 in 2019 to 159 in 2020.

As usual, provisional applications were filed almost exclusively by Australian applicants.  The total number filed in 2020 was down by 2% on 2019.  However, it is likely that the number of ‘quality’ provisional has fallen by more than this number would indicate, with applications prepared and filed with the assistance of external patent attorneys having dropped by nearly 5%, while self-filing increased by a similar proportion.

15 January 2021

How Up-to-Date is IP Australia’s AusPat Data?

SearchingOne of the great resources provided by IP Australia is its AusPat online patent data service.  AusPat enables users to search for Australian patents and applications using a range of options and search fields, view numerous data items for each application, and access most incoming and outgoing correspondence via eDossier.  In my view, it is one of the best available systems for online access of national patent data.  For example, in comparison with the USPTO’s services, AusPat effectively combines the functionality of the US Patent Full-Text Databases, the Public Patent Application Information Retrieval (PAIR) system, and the Patent Assignment Search system, into a single convenient and powerful interface.  And while Australian patent information ultimately finds its way into various other public and proprietary databases, AusPat is the first place that any new filings, changes, or events will be reflected.  It is, therefore, the go-to source for the most up-to-date data on all Australian patents and applications.  I rely heavily upon AusPat for much of the analysis I present on this blog, including the regular updates I have been providing over the past few months on patent filings during the COVID-19 pandemic.

One thing that other users may be wondering is: exactly how up-to-date is the data available in AusPat?  You might think that with almost all filing and other transactions now being conducted electronically, the consequences of any new applicant actions would be reflected immediately in AusPat.  However, that is not quite correct.

12 January 2021

While One IPH Firm Sues Former Partners, 20% of Patent Attorneys Jump Ship from Another

Moving boxesOn 14 December 2020, Pizzeys Patent and Trade Mark Attorneys – a firm in the stable owned by listed company IPH Limited (ASX:IPH) – filed suit in the Federal Court of Australia against former Pizzeys principals William Bennett and Martin Richardson, along with the new firm they have established, RnB IP (collectively ‘RnB’).  The lawsuit alleges that Bennett and Richardson lured lucrative US law firm clients away from Pizzeys, in breach of non-compete, non-dealing, and/or non-solicitation restraints that were included in their employment contracts subsequent to the acquisition of Pizzeys by IPH.

This lawsuit has been a long time coming, after Pizzeys was awarded preliminary discovery back in December 2019.  The documents required to be produced by William Bennett following that decision included communications with Martin Richardson, marketing plans, and communications with prospective clients, relating to the establishment of RnB IP.  I believe that discovery was provided early in 2020, and it is unclear why it has taken Pizzeys so long to decide to commence proceedings against RnB.  Perhaps they would blame the pandemic?

Meanwhile, elsewhere in the IPH group, there appears to have been a recent exodus of patent attorneys from Griffith Hack.  In December 2020, there were 48 patent attorneys recorded on the Register maintained by the Trans-Tasman IP Attorneys Board (TTIPAB) as being employed by Griffith Hack, but only 37 of these were still listed on the firm’s web site.  I am aware that at least one of these was a departure earlier in 2020, but my understanding is that most are recent resignations where staff are currently on ‘gardening leave’, or otherwise temporarily restrained from commencing new employment (and thus updating their registration details). 

These numbers represent a loss of about 20% of registered patent attorneys from Griffith Hack over a short period of time, suggesting a significant level of dissatisfaction among the firm’s professional staff.  Whether this dates back to life under the ownership of Xenith IP (which acquired Griffith Hack in 2017), or is a consequence of the more recent management of IPH (which acquired Xenith in 2019) is unclear.

22 December 2020

DABUS Down Under – Can an AI ‘Communicate’ an Invention to a Human Applicant?

Xmas robotBack in September I reported that an application naming an ‘artificial intelligence’ going by the name DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) as inventor had been filed in Australia.  The application – no. 2019363177 – was derived from an international application filed under the Patent Cooperation Treaty (PCT), and names Dr Stephen Thaler, the developer of DABUS, as applicant.  The Australian Patent Office issued a formalities report, objecting that the application does not comply with the Patents Regulations 1991, because ‘it is the Commissioner’s understanding that inventors for the purposes of the Patents Act 1990 must be natural persons.  As DABUS is not a natural person the Commissioner is of the view that no inventor has been supplied for the purposes of Regulation 3.2C(2)(aa).’  There has since been further correspondence between Dr Thaler’s Australian patent attorneys and the Patent Office.  Thus far, however, the initial objections have not been overcome, and it seems likely that the matter is headed for a hearing, which will result in a formal decision being issued.

On 19 November 2020, the applicant responded to the initial formalities report.  For some reason, this response is not currently available in the public ‘eDossier’ for the application, however the Patent Office’s reply of 25 November 2020 sets out the substance of the response:

You have indicated that there is no explicit definition of an inventor, which by implication means that an artificial intelligence machine can be an inventor. You have also stated that it is sufficient for the purposes of the Patents Act 1990 if the applicant derives title to the invention from the inventor under section 15(1)(c). In the present case this would require DABUS to transfer title to Stephen Thaler. It is not apparent that DABUS is capable of executing an assignment, or has a contract of employment (for instance).

Interestingly, however, the Patent Office reply goes further, by suggesting an alternative theory (not, it seems, put forward in the applicant’s response) under which the Dr Thaler might assert the right to be granted a patent:

It may be that you are suggesting that Dr Thaler should be regarded as the communicatee of DABUS (a category of applicants recognised under section 34(1)(e) of the 1952 Act, and amalgamated into the present section 15(1)(c) - JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141). According to traditional principles the communication should be for the purpose of obtaining a patent (H's Application (1955) 73 RPC 197).

The significance of identifying a mechanism for Dr Thaler to derive rights to DABUS’ inventions is that, in the Office’s view, if DABUS ‘is not capable of transferring or communicating an invention to a person, it would appear to be inconsistent with the structure of the Act for the machine to be treated as an inventor for the purposes of the Act.’  However, quite why the Office should wish to make its own suggestions in this regard is something of a mystery.

The applicant, for his part, appears to want no part of this novel theory proposed by the Patent Office.  In a further reply dated 9 December 2020, his attorneys have argued simply that:

The common law confers ownership of anything produced by DABUS to its owner, the applicant. There is a general rule that the owner of a thing is the owner of the fruits of that thing, much like the owner of a fruit tree is entitled to the fruit produced by that tree. The principle of accession or first possession can apply.

I think that this is the right approach (even though it is unlikely to succeed).  A UK court has already ruled that DABUS is incapable of transferring intellectual property rights to Dr Thaler (or anybody else), and there is no reason to expect a different outcome in Australia.  Furthermore, an analysis of the historical basis for the category of ‘communicatee’ suggests that it may no longer exist under Australia’s current patent laws and that, in any event, it would not provide for Dr Thaler to obtain a patent on DABUS’ inventions.  His best bet is therefore to continue to push the ‘ownership’ line, even though it has so far failed in the UK, the US, and at the European Patent Office.  I believe that it will fail in Australia, also, under the existing law.  But my understanding is that the larger objective of the Artificial Inventor Project, which is backing Dr Thaler’s applications, is to lobby for changes in the law, to recognise AI inventors, and entitlement by way of ownership.

In any event, the Patent Office’s unusual proposition provides an opportunity to delve into this strange historical category of ‘communicatee’.  What is it?  Why did it exist?  Does it still exist somewhere in the modern patent law?  (Readers interested only in Dr Thaler’s prospects of success, and not the historical context, can skip ahead to the section entitled ‘Can Title to an Invention be Derived from an AI?’)

30 November 2020

How the Australian High Court Found that Refurbished Ink Cartridges do not Infringe Seiko Patents

InkRecently, I wrote about the decision of the High Court in Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41, with particular focus on the Court’s finding, by a 4-3 majority, that the first sale of a patented product exhausts the patentee’s exclusive rights in that product.  In this article, I will look at the other aspect of the Court’s decision, namely its finding (again by 4-3 majority) that Epson printer ink cartridges that had been refurbished, refilled, and resold in Australia, did not infringe patents relating to aspects of the cartridges, which are owned by Seiko.

As we shall see, the decision of the High Court majority on infringement depended upon a distinction between use of a patented product following sale, and making of a new embodiment of the patented product.  It did not depend upon whether the (old) ‘implied licence’ doctrine, or the (new) ‘exhaustion’ doctrine applies under Australian law.  In this sense, it was not necessary for the Court to overturn over a century of law to replace the doctrine of implied licence with one of exhaustion, although it did so nonetheless, and it is that aspect of the case that has attracted most attention.

The reasoning of the majority on infringement is important, however, in giving guidance to lower courts, patentees, and providers of refurbished goods, on the circumstances in which modifying, repairing, or reconstituting of depleted or otherwise ‘expired’ goods may result in patent infringement.

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