04 February 2013

Patent Reform Update: News, Rumours and Speculation

ShhAs reported here two weeks ago, IP Australia recently published an update on its ongoing law reform process.  With less than three months now to go until commencement of the Raising the Bar IP law reforms on 15 April 2013, time is running out for IP Australia to finalise the updates to the regulations, the changes to its own practices, the corresponding contents of the examination practice manual, and everything else that needs to be in-place by the time the new laws come into effect.

All-in-all, it does appear that we have something of a sprint to the post ahead of us.  It seems quite likely that users of the Australian IP registration system (and their agents) will be receiving new information right up to the date of commencement, and possibly beyond, as IP Australia beds down a host of new practices and procedures. 

Additionally, the coming reforms are having predictable effects on the behaviour of patent applicants, while IP Australia continues to be involved in other review and reform processes, such as the Trans Tasman Single Economic Market (SEM) program between the governments of Australia and New Zealand.  With regard to this latter process, we were promised back in July 2011 that a trans-Tasman patent implementation plan would ‘deliver a single application process for both countries by early 2013, and a single patent examination by June 2014.’  As I am sure most readers are aware, it is now early 2013, and there does not appear to be any sign of a single Australia/New Zealand patent application as yet!

Nonetheless, over the past couple of weeks there have been further developments on a number of aspects of the reforms which have come to my attention one way or another.  Some of this information is ‘official’, while some would be best characterised as ‘rumour’ (though I have reasonable confidence in the reliability of the sources).

In particular, this post provides – with varying degrees of reliability – updates on the following ongoing matters:
  1. the process for finalising the amended regulations prior to commencement;
  2. IP Australia’s intended practice for application of the new A$1400 search fee;
  3. updates to the Patent Manual of Practice and Procedure (a.k.a. the Examiners Manual);
  4. progress on drafting of the new Code of Conduct for Patents and Trade Marks Attorneys, which must be maintained by the Professional Standards Board under the amended Regulations; and
  5. developments (or possibly lack thereof) in the trans-Tasman patent application process.

Revising the Regulations

I hear that revised drafts of the Amendment Regulations corresponding with Schedule 1 and Schedule 4 of the Raising the Bar legislation have been circulated to a select group of reviewers, under conditions of confidentiality.

When IP Australia originally released an ‘exposure draft’ of the Raising the Bar Bill to a select few ‘interested parties’ under similar confidential conditions, I was, frankly, outraged by the lack of transparency in the process.  Fortunately, the situation was subsequently rectified, albeit with a very limited period for stakeholders to make submissions.

However, the circumstances are different this time around.  A draft of the Regulations has been released previously, and a public consultation conducted which has resulted in a number of promised changes.  I imagine that the limited circulation of the revised draft is intended to get a few more eyes over the revisions to confirm that the changes will achieve what they are supposed to achieve.  IP Australia no doubt has neither the time, nor the resources, to deal with further feedback on the substance of the regulations.

I hope only that those privileged few who have been given the opportunity to review the revised Regulations take the time to consider the amendments and provide any comments necessary to ensure that they operate according to the stated intent.

Application of the Search Fee

One of the provisions that concerned me when the draft Regulations were first released was the creation of a new fee of A$1,710 for a ‘search by the Commissioner in relation to a patent request and complete specification as part of an examination, if the complete application was made on or after 15 April 2013’.

The wording in the Regulations allows for the fee to be charged upon examination of any ‘complete specification’.  This could be a standard application, or an innovation patent, based on this wording alone, although the draft Explanatory Memorandum stated that the fee is intended to apply ‘in relation to a patent request and complete specification for a standard patent’.

As a result of the consultation process, IP Australia has reduced the search fee to A$1400, and clarified that ‘the fee would be payable if there was no quality search available on which to base examination’ (i.e. where no foreign or PCT search and/or examination report has been published or otherwise made available to IP Australia).  Nonetheless, details of IP Australia’s proposed practice in relation to levying this fee have yet to be finalised and released.

I enquired as to whether the fee would be applied during the examination of innovation patents, and I have been informed that IP Australia currently has no plans to apply the search fee to innovation patents.  It will therefore continue to be the case that the cheapest route to obtain a search and opinion on patent claims in Australia, where no overseas search is available, will be to file and request certification of an innovation patent.  This strategy is not, however, without its disadvantages, not least of which is the fact that an innovation patent is granted an published within weeks of filing, thus sacrificing the 18 month period of secrecy available in the case of a standard application.

Bringing the Examiners Manual Up-to-Date

On 1 February 2013, numerous updates to the Patent Manual of Practice and Procedure were released.  The amendments are far to extensive to summarise here, but can be viewed on the Manual update page.

Generally, new updates are released at the beginning of the month.  I expect there will be further additions and amendments in March and April.

Progress on the New Code of Conduct

I have heard on the grapevine that a first draft of the new Code of Conduct for Patents and Trade Marks Attorneys has been prepared and circulated to concerned parties, including the Professional Standards Board for Patent and Trade Marks Attorneys (PSB), which is charged with maintaining and applying the Code.

The new Code will replace the existing standards, and is expected to include additional requirements such as those currently set out in the Code of Ethics of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA).

The Code of Conduct will place new obligations on Australian Patent and Trade Marks attorneys, which will be subject to oversight by the PSB.  These new obligations are likely to include providing clients with substantial detail of work to be conducted and anticipated costs.  I understand that the first draft of the new Code requires attorneys to provide clients with proof of current registration, and would further require all of this information to be provided upon commencement of any new ‘matter’ for a client.

While this is not dissimilar to the obligations imposed upon legal practitioners, the difference is that a ‘matter’ for a patent attorney might be an application on which costs of only perhaps A$3000-A$5000, from filing to grant, may be incurred over a period of three to five years.  A moderate-sized patent attorney firm would have thousands of such matters open at any given time, and may have hundreds of cases open for an individual client.

Hopefully the drafters of the new Code of Conduct will recognise the differences in the nature of the work carried out by patent attorneys, and that carried out by lawyers, and will ultimately produce a Code that provides effective protection of the interests of clients, while also being workable and not unduly onerous for attorneys to abide by.

Trans-Tasman Patent Applications

A rather cryptic update on the ‘Single Economic Market Patent Outcomes’ recently appeared on IP Australia’s Latest News page, which states that:

Since agreeing to the implementation plan, both offices have made good progress in understanding each other's patent application and examination processes.

Key to this work is the passage of the NZ Patents Bill 2008 which will more closely align the patents laws of New Zealand and Australia, and enable these patent outcomes to be progressed. IP Australia is working with New Zealand’s Ministry of Business, Innovation and Employment and IPONZ to develop legislative amendments to allow these initiatives to be implemented.

As I noted in the introduction, we were led to expect that a single application process would be close to implementation by now.  Clearly this is not happening yet, and the update appears to blame this lack of progress on the failure of the New Zealand Parliament to move more quickly to pass the new Patents Bill.

As I write this, the New Zealand Patents Bill is sitting at item no. 2 on the Order Paper (i.e the ‘agenda’) for the current sitting of the House of Representatives, which is due to return on 12 February 2013.  However, I hear that the enthusiasm for a single trans-Tasman application process is greater in Australia than in New Zealand, so it is far fromn certain that the process will move as quickly as its Australian proponents might like.


I will continue to keep an ear to the ground regarding the various reform programs currently underway, and try to keep you updated on developments.

If any readers have information they may wish to share, please fee free to contact me using the details at the top of the sidebar, via the comments below, or using the form on the ‘Ask Patentology’ page.  Comments and questions can be submitted anonymously, if you do not wish to reveal your true identity!

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