28 May 2019

Patent Attorney Survey Part 1: Respondent Demographics

Analysis As many readers will already be aware, between mid-March and April I conducted a survey with the objective of gaining some insights into how members of the trans-Tasman IP profession (primarily patent attorneys) are faring in the face of a challenging market and substantial structural changes within the profession.  Over the coming weeks I will be publishing a number of article reporting on the results of the survey.  This is no small task, in view of the number and diversity of responses received.  While some of the observations resulting from the survey will be uncontroversial, there are others that I expect (and, indeed, hope) may lead to further conversations about the impact of change on the profession.

This first article, however, should be relatively free of controversy.  It is primarily concerned with an analysis of the overall demographics of respondents to the survey, by comparison with the profession as whole.  What these results indicate is that there is a sound basis for belief that responses to the survey are broadly representative of the wider profession.

In the end, I received 247 responses to the survey.  Unsurprisingly, the overwhelming majority – over 90% – of these were from patent attorneys, and trainees, working in private practice in Australia and New Zealand.  (I am using the term ‘private practice’ in its conventional sense here, i.e. to mean attorneys providing services in the role of external advisors to clients, regardless of whether they are doing so as sole practitioners, members of privately-held practices, or members of publicly-listed groups.)  Many of the survey questions were not generally applicable to patent attorneys working other contexts (e.g. in-house), or to trade mark attorneys or lawyers.  I received a few complaints from people who felt excluded as a result, and I do appreciate that those people genuinely felt that they were being denied an opportunity to express their views.  However, this survey was intentionally focussed on those who are are most directly affected by current market conditions and the ongoing structural changes in the profession.

14 May 2019

Chinese Applicants Are Bypassing Local Patent Attorneys to Obtain Australian Standard Patents

Somewhere in Canberra... According to IP Australia records, somewhere in this unprepossessing block of apartments in suburban Canberra is the Australian ‘office’ of not one, but at least 47 Chinese companies, which collectively filed 164 standard patent applications between the beginning of January and the end of April, 2019 (link to Google Sheet with full listing).  In each case, it further appears that expedited examination of the application was requested at filing.  A number of the applications have already been accepted.  In some cases, examination reports have been issued, and responses filed.  These have generally been of high quality and, but for formalities in a couple of instances, have resulted in acceptance of the applications concerned.  In no case, however, has any registered trans-Tasman patent attorney been involved.  Purportedly, each response letter has been signed by an inventor on behalf of the applicant company, i.e. presumably their employer.  The actual occupant of the Canberra address is a mystery – unnamed on any application, and seemingly uninvolved other than to assist the applicants in meeting the requirement, under regulation 22.10 of the Patents Regulations 1991 to provide an ‘address for service’ in Australia or New Zealand.

Unusual Australian patent filing behaviour by Chinese companies is nothing new.  I first wrote about the phenomenon of Chinese companies obtaining relatively large numbers of Australian innovation patents back in February 2013, a practice that – notwithstanding some limited efforts by the Patent Office to curb abuse of the system – continues largely unabated to this day.  I recently estimated that around a quarter of all innovation patent applications filed in 2018 were made by Chinese applicants (upon further analysis, I would probably now revise that number upwards, closer to one third).  It is widely believed that this behaviour is motivated by direct financial incentives provided by Chinese authorities to companies that obtain foreign patents.  In this context, the Australian innovation patent has the advantages of being cheap to apply for, fast to issue, and providing an official ‘patent certificate’ upon grant that can, presumably, be used for the purposes of claiming the Chinese government hand-outs.

These latest applications are something different, however.  First and foremost, they are for standard patents, for which no certificate will issue until and unless the applications pass substantive examination (and the opposition period).  They all claim priority from earlier Chinese national patent applications which were, in most cases, filed only shortly before the corresponding Australian applications (and certainly well within the 12-month period allowed under the Paris Convention).  And, as I have already noted, it appears that expedited examination has been requested in each case, with the applicants having a genuine intention of securing a granted Australian patent, even where objections have been raised by the examiner.

In short, these Chinese applicants are not looking merely to obtain an official patent certificate by any means available, at the lowest possible cost.  Rather, they are seeking enforceable patent rights, and in doing so they are willing to incur the additional costs of examination fees, acceptance fees, and dealing with any examination objections that may arise.

Even so, these companies do not appear to be willing to incur the costs associated with engaging Australian patent attorneys to assist them in applying for or obtaining patents.  This naturally raises the question of whether this is a problem for the applicants, for the occupant of that Canberra apartment, or for anybody else who might be involved in these filings?

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