19 March 2017

Revisiting Official ‘Advice’ on Engaging Patent Attorneys

FeedbackLast month I presented an analysis of the fate of Australian patent applications filed by self-represented applicants.  It was not pretty.  I found that for Australian patent applications made by small self-filers, at least 90% of all provisional applications, 77% of all standard patent applications and 95% of all innovation patent applications ultimately result in absolutely no enforceable rights whatsoever. 

I laid some of the blame for this squarely at the feet of IP Australia which, despite its vision of having ‘a world leading IP system that builds prosperity for Australia’, appears to make only the most cursory effort on its web site to encourage prospective applicants to seek advice from a patent attorney.  I also presented examples of corresponding content from the web sites of the US Patent and Trademarks Office, the UK Intellectual Property Office, the European Patent Office and the Canadian Intellectual Property Office, all of which highlight the risks of failing to obtain professional assistance, and encourage applicants to engage a patent attorney.

This elicited some responses from IP Australia via Twitter.  The Chief Economist, Ben Mitra-Kahn, speculated that the fate of self-filed applications might not be a significant issue, on the assumption that the the relative number of self-filers is small.

Sadly, this is not the case.  Based on the Intellectual Property Government Open Data (IPGOD) 2016 data set, in calendar-year 2014, for example, the total number of standard patent applications filed naming one or more Australian resident private or small-business applicants was 1499, of which 220 (14.7%) were self-filed.  Clearly this is not so far short of the 20% of resident self-filers in the UK.  And if history is anything to go by, fewer than 50 of those 220 self-filed applications will ultimately result in granted claims.

IP Australia also pointed out to me that there is a downloadable PDF document, A guide to applying for your patent, that contains stronger suggestions regarding the benefits of professional advice.

This is all very well, except that unless you have the direct link to the document your prospects of actually finding it on the IP Australia web site are pretty slim.  After some effort, I tracked it down via the ‘Publications & Reports’ page, where applying ‘Filter: Publication’ and ‘IP type: Patents’ enables it to be found and downloaded.  Not surprisingly, therefore, between April 2016 and February 2017 it was viewed by only 699 unique users.  Given that this would be a poor number for even a fairly unpopular article on this humble blog, I am assuming that it represents only a small fraction of the number of visitors who would have viewed IP Australia’s main pages of patent information during that period.

More to the point, however, the PDF document is dated 24 October 2014, whereas the patent information pages in IP Australia’s current website are dated 30 May 2016.  Indeed, much of the information on the web site appears to have been adapted from the earlier document.  Notably, advice regarding seeking professional assistance seems to have been watered down in the course of adaptation.

For example, where the PDF document states that ‘patent attorneys are experts at writing claims, which is why you are strongly advised to use their services’, the corresponding web page says only that ‘patent attorneys are experts at writing claims, which is why you may consider using their services.’ 

Patent guide attorney advice
- IP Australia, A guide to applying for your patent, 24 October 2014

Web site attorney advice
- IP Australia, What to include in your application, https://www.ipaustralia.gov.au/patents/applying-patent/application-type/what-include, retrieved 19 March 2017

Given the similarity of these statements, it is difficult to avoid the conclusion that someone has, at some point, made a conscious decision to de-emphasise the value of professional advice.

At the conclusion of our Twitter exchange, IP Australia tweeted:

Nothing has happened as yet, but I am hoping that they follow-through on this.  The data in my earlier article speaks for itself – self-represented applicants consistently obtain significantly worse outcomes than applicants who have received suitable professional advice and assistance.  This represents a cost not only to the individual applicants involved, but to the Australian economy as a whole as a result of the wasted time and effort by the applicants, and the potential loss of valuable IP rights created by Australian innovators.

For the country to achieve IP Australia’s vision of ‘a world leading IP system that builds prosperity for Australia’ it is essential that innovators draw on the expertise of our highly-qualified and experienced professional advisers.  The IP offices of Australia’s major trading partners all appear to recognise this.  The special ability of Australians to devalue and disparage professional expertise is a handicap that must be overcome!


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