How Australian Patent Attorney Firms Compared on Filings in 2018

Last week, I looked at Australian patent filings in 2018 from the perspective of the patent applicants.  This week, I analyse the data from the perspective of the patent attorney firms and others who actually performed the filing.  The analysis reveals that while the merger of Fisher Adams Kelly Callinans and Cullens into Spruson & Ferguson made that firm the top filer of patent applications across all categories, a number of other firms have distinct ‘strengths’ when it comes to particular types of filings.  For example, smaller and privately-held firms tend to feature more prominently in new provisional application filings (most of which are on behalf of Australian clients), while larger firms and members of the three listed groups dominate in ‘follow-on’ filings derived from earlier priority and international applications (most of which originate overseas).

In a similar vein, while firms within listed groups were responsible for filing 54% of all Australian patent applications during 2018, they filed only 26% of provisional applications, with 39% being filed by individual attorneys and privately-held firms.  ‘Private’ attorneys also filed 27% of all innovation patents, compared with just 16% filed by firms within listed groups.

The ‘low-cost’ option of self-filing continues to be a popular – if unwise – choice for many Australian applicants.  Over a quarter of all provisional applications and innovation patents were self-filed in 2018, as were perhaps 10% or more of all standard applications filed by Australian residents.  Assuming that the past remains a good guide, the overwhelming majority of these applications will never deliver any value or result in rights being granted to their owners.

Data Source

As with last week’s applicant analysis, the data used for this article has been obtained from IP Australia’s online AusPat system, based on tables of results from various searches downloaded in CSV format using the ‘My List’ feature.  These tables are of limited size, and do not include full application details, however they do identify applicants, inventors, and the agents responsible for filing of each application.  I have processed this data offline to identify patent attorney firms, and self-filed applications for which the agent name matches either an applicant or inventor.

The caveat remains, as before, that all of the following data should be considered preliminary and highly unofficial!

Identifying Attorneys

I only consider an application to have been filed through an attorney if the agent name matches an individual or an employer identified on the official Register maintained by the Tran-Tasman IP Attorneys Board.  As a result, there are actually three classes of applications:

1. those filed by a patent attorney or firm; 
2. those that are self-filed; and 
3. those that identify someone other than a firm or an applicant/inventor as the Australian address for correspondence.  

I note that providing patent attorney services – which includes applying for patents on behalf of others – without being registered or otherwise qualified is an offence under section 201 of the Patents Act 1990.  However, I do not believe that merely providing an Australian address, or other incidental assistance, without offering any services or accepting payment, would fall foul of these provisions.

In any event, less than 5% of all Australian application filed in 2018 fall into this third category, of which over a quarter are innovation patents filed in the name of Chinese applicants.

Total Filings

The table below lists the top ten attorney firms for 2018 according to total numbers of Australian patent filings.  It also indicates, in each case, whether the firm is a privately-held independent (‘IND’), or a member of one of the three listed groups, IPH Limited (‘IPH’), Xenith IP Group Limited (‘XIP’), or QANTM IP Limited (‘QIP’).  Filings by Fisher Adams Kelly Callinans and Cullens made prior to their mid-year merger into Spruson & Ferguson have been attributed to Spruson & Ferguson, reflecting the current size and status of the firm.

Firm Name	Group	Total
SPRUSON & FERGUSON	IPH	5514
DAVIES COLLISON CAVE	QIP	3337
GRIFFITH HACK	XIP	2965
FB RICE	IND	2548
PHILLIPS ORMONDE FITZPATRICK	IND	2294
PIZZEYS	IPH	2187
SHELSTON IP	XIP	1979
FPA	QIP	1726
WATERMARK	XIP	1205
MADDERNS	IND	1087

As can be seen, seven of the top ten firms are listed group members – indeed, all firms in the listed groups, with the exception of New Zealand-based A J Park (which is just outside the table at number 12), are now in the top ten.  The two major private firms remain F B Rice at number four, and Phillips Ormonde Fitzpatrick at five, with Madderns just chipping in at number ten.

Provisional Filings

The table below lists the top ten attorney firms by provisional filings.  While the top five matches the ‘total filings’ ranking above, positions six to ten are somewhat different, with private firms Wrays and Michael Buck IP making the list at the expense of listed group firms Watermark and Pizzeys.

Firm Name	Group	Provs
SPRUSON & FERGUSON	IPH	379
DAVIES COLLISON CAVE	QIP	341
GRIFFITH HACK	XIP	256
FB RICE	IND	199
PHILLIPS ORMONDE FITZPATRICK	IND	164
WRAYS	IND	143
FPA	QIP	133
MICHAEL BUCK IP	IND	101
MADDERNS	IND	92
SHELSTON IP	XIP	91

Almost all provisional applications are prepared and filed on behalf of Australian companies and individuals, and provisional filings are therefore a strong indicator of the extent to which a firm provides services to local clients.  This is in contrast to applications filed on behalf of international applicants, which have usually been drafted and initially filed elsewhere, such that the Australian filing procedure is primarily administrative in nature.  This data therefore suggests that, relatively speaking, smaller and privately-held firms tend to focus more effort on providing services to domestic clients.

Other ‘Original’ Filings

Aside from provisional applications, other applications that commonly involve substantive professional work (drafting and otherwise) prior to filing are ‘original’ filings, i.e. those that are unconnected to an earlier priority or parent application.  The table below lists the top ten firms according to the number of originating innovation and standard patent applications filed.  Although the numbers are small, and thus not particularly significant, the general trend matches that of provisional filings, with smaller and privately-held firms featuring more prominently.

Firm Name	Group	Innovation (w/o priority)	Standard (w/o priority)
SPRUSON & FERGUSON	IPH	19	59
GRIFFITH HACK	XIP	10	26
FB RICE	IND	10	20
PHILLIPS ORMONDE FITZPATRICK	IND	14	15
MADDERNS	IND	18	10
SHELSTON IP	XIP	15	9
APT PATENT & TRADE MARK ATTORNEYS	IND	16	8
WATERMARK	XIP	13	7
FOUNDRY INTELLECTUAL PROPERTY	IND	13	2
BAXTER IP	IND	10	5

Applications with Priority

The vast majority of applications filed in Australia are standard applications that claim the benefit of an earlier filing, e.g. a domestic or foreign application and/or as the National Phase Entry of an international application filed under the Patent Cooperation Treaty (‘PCT NPE’).  Notably, most of these applications (over 90%, if the trend of recent years continues) originate overseas.

The table below lists the top firms for filing of ‘follow-on’ applications (which also include divisional applications, and applications for patents of addition).  Unsurprisingly, given the dominance of these applications in the overall filing numbers, the make up of this top ten closely reflects that of the total filings table above.

Firm Name	Group	Innovation (with priority)	Standard (with priority)	PCT NPE
SPRUSON & FERGUSON	IPH	42	1601	3414
DAVIES COLLISON CAVE	QIP	25	761	2196
GRIFFITH HACK	XIP	50	936	1687
FB RICE	IND	36	570	1713
PIZZEYS	IPH	7	698	1478
PHILLIPS ORMONDE FITZPATRICK	IND	35	503	1563
SHELSTON IP	XIP	63	479	1322
FPA	QIP	49	500	1038
WATERMARK	XIP	12	263	854
MADDERNS	IND	48	162	757

Listed Groups vs Private Firms

The table below summarises the aggregated shares of filings by firms in listed groups versus privately-held firms.  While the listed groups dominate the top 10 overall, and the top five in all categories discussed above, competition from private firms and attorneys remains strong.  There are, in fact, around 100 firms and individuals that were actively offering patent attorney services in Australia in 2018 (as indicated by filing of at least one application on behalf of a client), and the filings by this large number of smaller providers all add up!

	Private	IPH	Xenith IP	QANTM IP
Patent Attorneys	384	92	76	73
Total filings	13086	8332	6149	5063
Provisional	1900	406	403	474
Innovation (w/o priority)	205	20	38	13
Standard (w/o priority)	168	67	42	7
Innovation (with priority)	357	68	125	74
Standard (with priority)	2830	2450	1678	1261
PCT NPE	7626	5321	3863	3234

While there are just over 1000 patent attorneys on the official Register (not a large number, in a country with a population over around 25 million), 625 either filed at least one client application in 2018, or are employed by a firm that did so.  Some work in-house, e.g. in industry, academia, or research institutions.  Some are based in New Zealand and, while technically qualified to file directly in Australia on behalf of their clients, may choose not to do so.  Still others – me included – provide IP- and related services on a full- or part-time basis, without being directly involved in filing and prosecution of patent applications.

Of the 625 employed and individual attorneys actively involved in filing during 2018, a considerable majority are private (61% versus 39% in listed groups).  Among attorney-filed applications, private firms and attorneys dominate both provisional filings (39% versus 26% of 4,905 applications filed in 2018) and innovation patent filings (27% versus 16% of 2,107 applications filed in 2018).

Self-Filers

The table below lists numbers for self-filed applications in Australia in 2018.

Application Type	Number
All	2098
Provisional	1257
Innovation	535
Standard	229
PCT NPE	77

Of all application types, applicants are most inclined to prepare and file their own provisional applications (26%) and innovation patent applications (25%).  This is most likely because these application types are promoted as providing an ‘entry point’ to the patent system, and the cost (in terms of official fees) is low.

Overall, just 1% of all standard patent applications were self-filed in 2018.  However, almost all self-filers are Australian, and only 10% or fewer of all standard applications are filed by Australian residents.  Thus, the proportion of Australian applicants who filed their own standard patent applications in 2018 is most likely in excess of 10%.  This is not good news for these applicants – when I last analysed the historical performance of self-filers, in February 2017, I found that under 23% of all self-filed standard patent applications result in any accepted claims.

Conclusion – Impact on Proposed QIP/XIP Merger

As I reported recently, the Australian competition regulator, the Australian Competition and Consumer Commission (ACCC), is currently conducting a review of the proposed merger between QANTM and Xenith that was announced back in November 2018.  However, the numbers above suggest that competition in the Australian market for patent procurement services remains healthy, whether or not the merger proceeds.

While firms in listed groups file significantly more applications on behalf of foreign applicants than private firms and attorneys, this is largely a reflection of the fact that these groups include three of the top five largest firms (by professional staff numbers) in the Australian market, and thus have among the highest capacity to handle large volumes of filing and prosecution work.

Across all other areas of patent filing and prosecution practice, however, private attorneys and firms are still providing a majority of services, with dozens of smaller service providers available to clients.

Furthermore, the three listed groups collectively comprise eight firms that continue to be operationally independent, and to compete against one another in the marketplace.  Following the merger, the only one of the above tables that would change is the comparison between private firms and listed groups, in which the third and fourth columns would be consolidated.  Even then, private firms and attorneys would still exceed either one of the two remaining listed groups on total filings.

It is therefore difficult to see how the proposed merger would result in substantial lessening of competition in the market for these services (and, for the record, I have shared these numbers, and my views, with the ACCC in the course of their public consultation).  While the official deadline for public submissions to the review has passed, the ACCC is not set to announce its findings until 21 March 2018, so if anybody has any further pertinent input I am sure they would be open to hearing it!

Tags: Australia, Patent analytics, Patent attorney profession