16 April 2017

IP Australia Updates Website with Better Advice for Patent Applicants

Browsing with tabletBack in February, I presented an analysis of Australian patent application data showing that self-represented applicants tend to achieve extremely poor outcomes relative to those who seek professional advice and assistance.  In doing so, I pointed out that IP Australia’s web site provided only the most minimal encouragement for prospective applicants to engage a patent attorney before proceeding.  As I reported further in March, this did not pass unnoticed at IP Australia, which was quick to point out that they have a downloadable PDF document (A guide to applying for your patent, 3.89MB) which includes a number of stronger statements about the benefits of obtaining professional assistance.  However, this document was not easy to find, since it was not linked from any of the primary informational/educational content on the site.

Via a tweet at the time, IP Australia promised that they would look into the issue, and see where it might be possible to make improvements.

I am really pleased to report that IP Australia have been true to their word, and the following pages on their web site now include recommendations for prospective applicants to seek professional assistance and/or links to the downloadable patent application guide:
  1. Patent basics
  2. Types of patents
  3. What can be patented
  4. Decide if you have a standard patent
  5. Apply for a standard patent
  6. What to include in your application
  7. Decide if you have an innovation patent

Professional Advice is More Than Application Assistance

If you are an innovator, the benefits of speaking with a professional adviser, such as a patent attorney, before charging straight for the patent office go far beyond just making sure that you have invented something patentable, and that you file a quality application with good prospects of protecting the invention, although it is these aspects which which IP Australia is naturally most concerned.  A patent attorney should also be informed of your specific commercial objectives and can advise on the most suitable overall filing strategy.

Depending upon your specific circumstances, the best strategy may involve not filing a patent application (even if your invention might be patentable), or it may involve deliberately delaying filing.  You might be best served by filing a provisional application initially, even if your invention is already complete and ready for market.  Or there may be factors that make it worthwhile to proceed directly with a standard or innovation patent application, and even to accelerate examination, despite the fact that you may still need to invest significant time and money in bringing your invention up to a commercial standard.  Perhaps you are not looking to develop and market the invention yourself at all, but are seeking an investor, partner, licensee or acquirer to take on that role.

A national IP regulatory authority, such as IP Australia, can tell you a lot about the procedures required to obtain a patent in their country, but they cannot advise you on any of these issues.  Even if you never end up applying for a patent, for any one of a number of possible reasons, the time (and, yes, maybe money) spent on some sound professional advice may save you from making wrong moves and potentially costly strategic mistakes.

Data Backs Patent Attorney Experience

Every patent attorney with a few years’ experience under their belt has a few stories to tell about clients who had attempted to ‘go it alone’ initially, and only later sought professional assistance after finding themselves out of their depth in an ocean of legal complexities and administrative confusion.  Too often these cases are unsalvageable.  Almost invariably the outcome is inferior to what it would have been had the client sought legal and strategic advice at an early stage.  Knowing this, it is hardly surprising that attorneys are concerned when their national IP office appears to be encouraging prospective applicants to believe that they can successfully prepare and file their own patent applications.  Contrary to the opinions of cynics, it is quite often the patent attorneys who care more about outcomes (for innovators) than their own incomes who are inclined to expend time and energy criticising the efforts of patent offices to educate applicants.

Nonetheless, as the meme goes, ‘the plural of “anecdote” is not “data”’.  This does not mean that anecdotes are not ‘true’, nor that anecdotal evidence does not point towards the ‘truth’.  But if this is the case, then it should be possible to find data to corroborate the anecdotal evidence.  Or, conversely and more scientifically, if it turns out that all of the data points elsewhere, then the hypothesis derived from the anecdotes must be wrong.

Which brings me to what I think is really great about this whole story.  Patent attorneys ‘know’ (by which I mean ‘hypothesise’), from experience, that bad things often happen when innovators try to do their own patent work.  IP Australia makes data available, in the form of the Intellectual Property Government Open Data (IPGOD) data set, which can be used to test and quantify the attorneys’ hypothesis.  Supported by this data, IP Australia makes changes to the information it provides on its web site to prospective applicants.  This is a win for everybody.

Conclusion – Providing Evidence-Backed Information

Of course, it cannot be guaranteed that visitors to IP Australia’s web site will heed the recommendations to seek professional assistance, but unless you lead the horse to water there is no prospect of it taking a drink!  I look forward to revisiting the data in a couple of years’ time to see whether there is any detectable effect on self-filing behaviour. 

I confess to being sceptical that this one change will have much impact by itself – I suspect that there are other cultural factors contributing to Australian innovators eschewing professional advice – but providing the best available information supported by evidence is a necessary, if not sufficient, condition for improving outcomes for patent applicants.


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