11 August 2019

Patent Attorney Survey Part 2 – How Life Within Listed Groups Compares with Privately-Owned Firms

Masks - happy and sadIn this article, I am going to look at responses to the second section of the survey of trans-Tasman IP professionals (primarily patent attorneys) that I conducted earlier this year.  This part of the survey addresses various aspects of job satisfaction and the working environment, including ‘happiness’, professional support, and opportunities for career development and advancement.  In particular, I will compare the responses across groups defined by firm structure (i.e. ‘listed group’ firms versus traditional privately-held firms) and seniority, distinguishing between those at the ‘top’ of their organisations (i.e. owners of privately-held firms and employed principals, or the equivalent, within listed group firms) and employees at the levels below who are perhaps aspiring to these roles in future. 

I selected these four categories (‘private owner’ – sample size 54; ‘private employee’ – sample size 97; ‘listed principal’ – sample size 28; and ‘listed non-principal’ – sample size 68) after initially analysing the data, and finding that the responses of firm owners are quite different, in many cases, from those of their employees.  It therefore would not make sense to divide the data only into ‘listed’ versus ‘private’.  And, having made this division among attorneys within privately-held firms, it made sense to make a corresponding division among the listed group respondents.  Indeed, as you will see, there are a number of areas in which the views of principals within the listed group firms differ measurably from those of their less senior colleagues.

If you have not already read my earlier article on respondent demographics, then I recommend you do so.  That article makes the case that the survey responses are, overall, reasonably representative of the profession as a whole – not least because around 25% of all registered patent attorneys working in private practice responded, and this sample of the population is broadly representative of the whole, on characteristics such as gender, firm structure/ownership, and firm size.

In the following analysis, you will find various statements regarding the survey results that are supported by p-values, i.e. measures of statistical significance.  I have written an article explaining how these values were derived, and what they do, and do not, mean.  I recommend reading this article if you really want to understand what can, and cannot, reasonably be concluded from the survey results.  Furthermore, if you intend to take these results and use, or quote, them in a different context, you would be performing a great disservice to yourself (and me) if you do not make the effort to read this article so that you properly understand what you are doing.

While it is difficult to summarise all of the results in brief, I will make a few observations by way of introduction.  Firstly, owners of privately-held firms stand out as being more satisfied with their circumstances in every respect.  This is perhaps unsurprising, in that they are essentially a self-selecting group of individuals who presumably wanted to be business owners, and have achieved that objective.  What might have been less expected is how little difference there is between the other groups.  Certainly there are differences, and many of those differences are statistically significant, even where they may be relatively small.  In many respects, employees of privately-held firms consider themselves on a fairly equal footing with employed principals of listed group firms.  To the extent that there is a difference, listed group principals are far more polarised in their views – broadly speaking, many in this group appear to be either highly satisfied or highly dissatisfied with their circumstances, while fewer take up the middle ground than in other groups.  Non-principal employees of listed group firms appear to be least content with their circumstances, but even so there are many in this group that report agreement, or strong agreement, with positive statements about their employment conditions.

Patent Attorney Survey – A Primer on Statistical Analysis (and Pizza)

Pizza chefIn my articles presenting results of the attorney survey that I conducted earlier this year, I provide statistical measures – notably p-values – of the significance of certain results, such as whether particular subsets of patent attorneys are more or less satisfied with various aspects of their employment than others.  It is, I believe, important that readers with an interest in these results have a clear understanding of what these statistical measures mean (and, indeed, what they do not mean).  This requires some explanation of how they have been obtained, and the specific questions that they are designed to address.  This article is intended to provide such an explanation.

I realise that not everybody will take the time to read this article in its entirety.  For those who do not, the two main points that you should nonetheless take away are these:
  1. statistical significance is not the same thing as what we might call ‘practical significance’ – while we might be confident, based on a statistical test, that an observed effect (e.g. a difference between two groups) is ‘real’, and not just the result of random variations in our limited sample, this does not necessarily mean that the effect is large and, indeed, we may not be able to say anything much about the size of the effect; and
  2. p-values are not ‘magic bullets’ that can tell us exactly what to think about our data, based upon some fixed threshold (e.g. p < 0.05) – it is necessary to consider them in the context of the data, and of the importance and consequences of any conclusions that may be drawn and/or decisions made based upon the results.
For casual readers, this may be enough.  However, I hope that anyone who intends to take any of the results presented in my articles and use them in other contexts (e.g. for decision-making, or quoting them elsewhere) takes the time to read this article, and the effort to be suitably careful in interpreting the data.  While statistics is obviously a pretty dry topic, I have tried to keep things reasonably simple and (hopefully) interesting by presenting the analysis with reference to a hypothetical example involving pizzas and anchovies!

24 June 2019

Australian SMEs Show a Growing Preference for Smaller Patent Attorney Firms

Choose wisely... Back in February, I published data which indicated that Australian patent attorney firms within listed groups, and perhaps larger firms in general, appear to have been losing share in the market for Australian patent applications filings to smaller, privately-held firms.  In this article I will take a closer look at this trend, by focusing specifically on filings by Australian-resident applicants, breaking firm size and corporate structure down into more precise groups, and looking at the behaviour of small and medium sized enterprises (SMEs) in particular. 

When it comes to preparing and filing original patent applications for new inventions, Australian SMEs collectively are patent attorneys’ most significant clients, by far.  In 2017, SMEs filed as many original patent applications with the assistance of patent attorneys as all other categories of Australian applicants combined.  They are also the only category of Australian applicants that actually generated an increase in the number of original patent applications filed over the decade spanning 2008 to 2017.

In recent years, however, this important category of patent applicants has been exhibiting some clear trends in choice of patent attorney service providers.  In particular, as I will show in this article, Australian SMEs are increasingly choosing smaller service providers over larger ones and, since local attorney firms began to be owned by publicly-listed companies, privately-held firms over those within the listed groups.

09 June 2019

The Patent Office is Granting Time Extensions to Australia’s Grace Period for Filing After Self-Disclosure

Deadline The Australian patent law and regulations provide applicants with a 12-month ‘grace period’, enabling an application to be validly filed following an inadvertent, or intentional, act of self-disclosure of an invention.  As most readers will doubtless be aware, this is significant because in the absence of such provisions, any disclosure – such as publication or public use – of an invention before securing a priority date becomes prior art that can be used to invalidate patent claims on the basis of lack of novelty or lack of inventive step.  While there are a number of countries that provide a general period of grace of this kind, notably including the USA and Canada, the majority of countries do not.

Furthermore, most countries (Australia included) have provisions in their patent laws to permit time limits to be extended in appropriate circumstances, such as when an inadvertent error or omission has occurred, or when circumstances beyond someone’s control have prevented them from meeting a deadline.  Typically, however, grace periods cannot be extended beyond the legislated period (i.e. 12 months, in Australia’s case).  There are a number of ways to rationalise this restriction.  One approach is to observe that an inventor (or successor in title, such as an employer) is under no obligation to file a patent application at all and, until an application of some sort is filed, does not make themselves subject to any provisions of the patent system.  Thus, once a disclosure has occurred, the onus is entirely upon the prospective applicant to ensure that an application is filed before the expiry of any applicable grace period, given that there is no public record within the system of any relevant filing ‘deadline’ that could be extended.

Another approach is to consider that a grace period operates retrospectively, rather than prospectively.  That is, when applying the patent laws to an application, the effect of the grace period is to permit certain disclosures to be disregarded, so long as they occurred no more than 12 months prior to the actual filing date of the application.  This is in contrast, for example, to the filing of an initial priority application, which formally establishes a specific date 12 months in the future by which any further applications must be filed in order to obtain the benefit of the priority date.  Extending a grace period thus has the effect of increasing the period further back in time, as opposed to granting the applicant additional time to complete an act for which a specific time limit has already been established within the system.

Permitting extensions to grace periods is problematic for a number of reasons.  Firstly, it may leave no obvious trace of the fact that a patentee has been permitted to obtain a patent despite having made a public disclosure of the invention more than 12 months prior to filing an application.  A member of the public would need to dig into the details of the Patent Office files to discover exactly what additional period of grace has been allowed, and in what circumstances.  Secondly, due to the retrospective effect of a grace period extension, the applicant is effectively permitted to file an application later than should have been allowed, which is advantageous because a patent that is filed later also expires later than would otherwise be the case.  In priciple, however, the grant of an extension of time should do no more than place the applicant in the same position that they would have been in had they not missed the deadline in the first place, and no better.

Notwithstanding these issues, it has recently been brought to my attention that IP Australia is, in fact, granting extensions to the grace period.  I must confess that I had not believed such extensions to be possible (although, as I shall explain, there is a single published Patent Office decision from 2002 that suggests otherwise).  Indeed, as will become clear, I remain sceptical about the validity of extending the grace period, in the absence of any judicial consideration of the matter.

28 May 2019

Patent Attorney Survey Part 1: Respondent Demographics

Analysis As many readers will already be aware, between mid-March and April I conducted a survey with the objective of gaining some insights into how members of the trans-Tasman IP profession (primarily patent attorneys) are faring in the face of a challenging market and substantial structural changes within the profession.  Over the coming weeks I will be publishing a number of article reporting on the results of the survey.  This is no small task, in view of the number and diversity of responses received.  While some of the observations resulting from the survey will be uncontroversial, there are others that I expect (and, indeed, hope) may lead to further conversations about the impact of change on the profession.

This first article, however, should be relatively free of controversy.  It is primarily concerned with an analysis of the overall demographics of respondents to the survey, by comparison with the profession as whole.  What these results indicate is that there is a sound basis for belief that responses to the survey are broadly representative of the wider profession.

In the end, I received 247 responses to the survey.  Unsurprisingly, the overwhelming majority – over 90% – of these were from patent attorneys, and trainees, working in private practice in Australia and New Zealand.  (I am using the term ‘private practice’ in its conventional sense here, i.e. to mean attorneys providing services in the role of external advisors to clients, regardless of whether they are doing so as sole practitioners, members of privately-held practices, or members of publicly-listed groups.)  Many of the survey questions were not generally applicable to patent attorneys working other contexts (e.g. in-house), or to trade mark attorneys or lawyers.  I received a few complaints from people who felt excluded as a result, and I do appreciate that those people genuinely felt that they were being denied an opportunity to express their views.  However, this survey was intentionally focussed on those who are are most directly affected by current market conditions and the ongoing structural changes in the profession.

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