01 January 2013

Top Fives: What You Read, and What We Liked, in 2012

Copyright (c) 123RF Stock PhotosFirstly, we would like to wish all of our readers a very happy New Year, and all the best for 2013!

As arbitrary as the exercise may be, the roll-over of the date provides a prompt for many people to review the past year, take stock, evaluate successes and failures, and prepare for the challenges of the coming year.  Those who thought that the ‘Mayan Apocalypse’ would get them off the hook this time around are no doubt sorely disappointed, and under-prepared for the annual soul-searching!

In this general spirit, we are pleased to present your, and our, ‘top fives’ of 2012.


The following articles have the distinction of being the five ‘most read’ posts of the year.  In case anybody is wondering why this list does not seem entirely consistent with the ‘all time’ most popular posts listed in the sidebar, it is because here we use the Google Analytics measure of ‘unique pageviews’, which is a more accurate indication of actual readership than the ‘raw’ pageviews measure used by the sidebar widget.

1. Five Reasons Why Ars Technica’s Savaging of CSIRO is Appalling

Back in April the Commonwealth Scientific and Industrial Research Organisation (CSIRO) announced an end to many years of patent litigation in the US, with all remaining defendants in a case involving wireless local area network (WLAN) agreeing to settle for a reported total payment of $220 million.  Many Australians – including some current politicians who had nothing to do with the pioneering work conducted in the early 1990’s – naturally felt that this was a notable success resulting from some home-grown scientific research, and were not backward in coming forward to say so.

A writer for the online technology news site Ars Technica took a different line on the settlement of CSIRO's lawsuits, saying that ‘US consumers will be making a multimillion dollar donation to an Australian government agency in the near future, whether they like it or not,’ before going on to paint the organisation as little more than a common patent troll (though without actually using the term).

It appears that the author, Joe Mullin, was particularly incensed by the way the legal win was portrayed to Australians by CSIRO and the Australian government Minister for Tertiary Education, Skills Science and Research.  The Minister stated in a media release that ‘people all over the world are using WLAN technology, invented right here in Australia, to connect to the internet remotely from laptops, printers, game consoles and smart phones in their homes, workplaces and cafes.’  Mullin interpreted this, and similar statements, as claims that Australia had ‘invented WiFi’, which formed the starting point for a savage critique of CSIRO's strategy.

We thought a response was in order, so we wrote one.  It went viral.  Without any participation on our part, it became the centre of debate in a comments section on the Ars Technica site, following Mullin's own defence of his article.  Our article was linked from Reddit, and later a link was retweeted by Australian celebrity scientist Dr Karl Kruszelnicki.  It took less than 24 hours to become, by a factor of nearly two, the most frequently viewed article ever on the Patentology blog, and thus a clear no. 1 for 2012.

2. The Story Behind CSIRO’s Wi-Fi Patent ‘Windfall’

The second most popular post of 2012 was our version of the history behind the development, commercialisation, licensing and litigation of CSIRO’s WLAN patent.

While this could have been because of the popularity of the Ars Technica rebuttal piece (from which it is linked), the analytics say otherwise.  While the WLAN history post received a second spike in readership upon publication of the subsequent article, it was already popular, and has continued to receive a steady flow of visitors ever since.  Around 75% of all readers have come to this post from off-site, and of those who arrive via another page of the blog, only around 35% have come from the Ars Technica article.

Re-reading the article now, in the light of subsequent developments and further information that has come our way, it still stands up as an accurate history of the CSIRO’s involvement in the development of Wi-Fi technology.

3. ‘Grace Periods’ – Consequences of Disclosure Before Filing

The continuing popularity of our article on patent application ‘grace periods’ – most of which results from organic search results – is no doubt due to the fact that, to our knowledge, there is no more comprehensive guide to grace periods around the world anywhere on the web.  Certainly, we were unable to find any other single source of information when researching the post.

Even so, our list remains incomplete and should not be considered authoritative.  There is some additional information in the comments, and we received further feedback in a discussion on LinkedIn, however we simply do not have the time to maintain the Internet’s definitive guide to grace periods.

Or, to put it another way, we are glad that readers find the article useful, but we cannot take responsibility for the consequences to anyone of relying upon our information alone!

4. Australia’s ‘Raising the Bar’–What This Means for Patent Applicants

The past year saw the passage of the most significant single set of reforms to Australian IP legislation since the passage of new Patents, Trade Marks, and Plant Breeder's Rights acts during the first half of the 1990s.  While the reforms included changes to trade mark procedures, enhancements to enforcement of copyright and registered trade marks, along with minor amendments to the Plant Breeder's Rights and Designs Acts, by far the most significant reforms are those which apply to the Patents Act 1990.  Indeed, the patent reforms were the sole subject of debate in both the Senate and the House of Representatives prior to passage of the Bill. 

The primary purpose of the patent law reforms – most of which come into force on 15 April 2013 – is to raise the standards required of a valid patent to match those of Australia's major trading partners, such as Europe and the US.

While a patent granted under the reformed Act may be more highly ‘respected’, in the sense that it has been tested against more stringent requirements, the fact is that the same claims granted under the current provisions will be less vulnerable to subsequent invalidation.  There is really, therefore, no particularly good reason why anyone who has the choice would want to have their patent granted under the revised law, rather than the existing provisions.  And while the reforms are not retrospective, they will apply to some applications which have already been filed unless the applicants take steps to ensure that they enter the examination process prior to commencement of the new provisions.

It is therefore not surprising that our article explaining the main impacts and action points for patent applicants has proven popular, coming in at no. 4 despite its rather dry legislative subject matter!  And the suggestions set out in the article remain just as valid today – and up until 15 April 2013 – as they were when originally published.

5. Senior Patent Attorney Found Guilty of ‘Unsatisfactory Conduct’

Back in February, the Patent and Trade Marks Attorneys Disciplinary Tribunal issued a rare decision, finding a senior member of the Australian patent profession guilty of unsatisfactory professional conduct, for failing to resolve a conflict of interest between two clients.  A junior attorney, who had been working under the supervision of the senior attorney, was cleared of related charges. Despite the guilty finding, no further disciplinary action was ordered.

The case highlighted a significant disparity across the profession in Australia in the understanding of when conflicts of interest arise, as well as when the best course for all concerned is to take evasive action at the first sign of a potential conflict!  The Tribunal found, in effect, that behaviour which some in the profession clearly consider acceptable, in fact constitutes unsatisfactory conduct.

We considered the Tribunal decision to be essential reading for all Australian patent and trade marks attorneys, as well as useful guidance for clients and others outside the profession, which perhaps explains the popularity of our discussion of the case.

We did receive some criticism for our decision not to name the attorneys involved in our published post.  However, given that the senior attorney had already retired, and the junior attorney was cleared, we did not wish to be responsible for this episode becoming a high-ranking result in any web search for their names!  The identities of the two attorneys are not a secret – you merely have to click through to the published decision of the Tribunal.


Contrary to what you might have believed in high school, there are more important things in life than popularity.  Often the articles that we feel most proud of, or that we had the most fun writing, do not attract the attention that we might think they deserve.  So here is a second chance for five of our favourite posts that did not win in the popularity stakes.

1. Can I – and Should I – Patent My Smartphone App?

We suspect that the only reason our discussion of the legal, commercial and practical issues around the patenting of smartphone apps is not in the top five most popular is because it has not had sufficient time. While it did not receive the initial boost of topical interest from which the CSIRO WLAN articles benefitted, it is still receiving a steady stream of views, mostly via organic search.

This is the article to read first, if you are considering contacting us – or any other patent attorney – about protecting a smartphone app.

2. Smartphone Wars, Gangnam Style!

Part fun, part serious speculation about the future of innovation and invention in South Korea, we found ourselves just as caught up in Korean pop star Psy’s ‘cheesy dancing’ craze as (so it seemed) the rest of the western world!

3. A $29 Billion US Troll-Tax or Just Another Statistical Smokescreen?

In June, a study conducted by Boston University law researchers James Besson and Michael Meurer, and purporting to show that ‘patent trolls’ are costing the US economy $29 billion every year, received an enormous quantity of media attention. We are still seeing new articles critical of the patent system which quote this figure uncritically.

Debate about the operation of the patent system is entirely appropriate in a democracy, however the critical thinking and analysis should not stop as soon as someone finds a single study with conclusions that happen to support their position. In this case, there were, in our view, some serious flaws in the methodology employed by Besson and Meurer.

We were not the only ones to question the study – critical appraisals also appeared on the IAM Magazine blog, and Gametime IP – but we were certainly in a tiny minority. Most gratifying, however, was a subsequent (and more rigorous) analysis by David L Schwartz of the Chicago-Kent College of Law and Jay P Kesan of the University of Illinois College of Law, which concurred with our criticisms, and even cited our article! (See Patentology Cited in Academic Paper on Cost of Patent Trolls.)

4. IP Australia Has Lost Perspective On ‘Business Method’ Claims

On a number of occasions during 2012 we had cause to take issue with the approach taken by the Australian Patent Office in relation to so-called ‘business method’ patents. This is not to say that we necessarily always thought that rejected claims ought to have been allowed. However the reasons given for rejection have, in our view, become increasingly convoluted, resulting in great uncertainty for inventors, applicants and advisors.

We are looking forward to the Federal Court resolving this mess in the first half of 2013 (see Research Affiliates, RPL Central Have Their Days in Court). In the meantime – and whatever the court decides – we remain of the opinion that the analysis of patent-eligibility should not be as difficult as IP Australia has been making it appear.

5. Why My Hot Cross Bun Recipe Is Not Patentable

A tutorial on the patentability of recipes and step-by-step instructions (with photos) on how to make delicious hot cross buns!  What’s not to like?


So there you have the ‘popular’ vote, and our personal list, of the top articles on Patentology in 2012.  Perhaps you have your own favourites – we would love to hear what you liked, so we can perhaps do more of it in future, so please let us know in the comments.

What did you think were the big issues in patents in 2012?  And what does 2013 have in store?  Again, please feel free to leave your thoughts in the comments.

Thank you for reading over the past year, and we hope you will stay with us for the next!


vtwkang said...

Thank you for the work that you do here. This is one of the most detailed, informative and reliable IP blogs going around (especially for tech disputes, where there is a lot of misinformation on the internet). It's a real pleasure to read.

Also, your work ethic is incredible, especially considering that your legal practice must keep you very busy!

Mark Summerfield said...

Thank you for your kind words! It has been a challenge recently to keep up the rate of posting, but I certainly hope to continue being informative throughout 2013!

vtwkang said...

Well I hope that you're able to continue posting at a good rate this year. If more people that understand the law were able to share their knowledge with the general public, then perhaps the rest of us would be better informed!

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