28 April 2020

Annual Australian IP Report Spins 2019 Patent Filing Numbers by Devaluing Divisionals

ReportingUpdate (25 May 2020): Following publication of this article, IP Australia reached out to me regarding the issues raised, and we spent a couple of weeks working through our respective data sets to identify the origins of the discrepancies between our numbers.  The result of this collaboration was some improvements and corrections on both sides. Rather than update this article, I have written separately about what we found, and what was done to address the issues identified.  One consequence of this is that the online version of the 2020 IP Report was updated with some clarifications and corrections, so a number of the questions and criticisms raised in this article no longer apply.  The following discussion will make more sense with reference to this earlier version of the ‘Patents’ section of the IP Report, which was archived on 30 April 2020.

Last week, IP Australia released the Australian Intellectual Property Report 2020 (‘IP Report’).  As has become customary over the past few years, the launch of the IP Report was timed to coincide with World IP Day, which fell on Sunday 26 April 2020.  As my own analysis, published back in January, indicated, the number of Australian standard patent applications fell in 2019, by just under 1%.  The IP Report also confirms my expectation that Chinese patent applicants would surpass Germany and Japan, and push the UK out of the top five, to take third spot in the annual country rankings. Applications from China experienced year-on-year growth of over 45%!

I anticipated that IP Australia would have difficulty placing a positive spin on the 2019 patent filing numbers, given that the decline in 2019 follows two years of growth in patent applications.  However, this has not stopped them from trying, by introducing a new metric which counts ‘original’ applications – i.e. those based on patent specifications being filed for the first time in Australia – as distinct from divisional applications – i.e. those based on the contents of earlier filings.  The apparent implication of the use of this metric in the IP Report is that divisional applications should be ascribed a lower ‘value’ (in some sense) than ‘original’ applications, such that a decline in divisional filings is somehow less significant than a decline in ‘original’ applications. 

Following this same approach, IP Australia has ranked the top applicants of 2019 according to the number of ‘original’ applications filed, ignoring divisional filings.  On this measure, Australia’s biggest filer, Aristocrat Technologies, drops from fourth place, with a total of 238 standard patent applications, to tenth place, with just 96 of those applications being ‘original’ rather than divisional.  An even bigger loser, however, is Apple Inc, which falls from eighth place, with 152 total applications by the conventional measure, to 41st place on the ‘original filings’ measure (45 qualifying applications), behind Australia’s CSIRO (46 ‘original’ applications, out of 51 total filings).

As I shall explain, I believe that there are a number of problems with the use of ‘original filings’ as a metric.  Furthermore, the ‘Patents’ section of the IP Report unfortunately includes results that I have been unable to reproduce, some significant discrepancies between IP Australia’s data and my own analysis, and statements that do not make sense, even on their own terms.  This is a pity, because the annual IP Report is generally a useful summary of activity during the previous year, and it is important that it should be a trustworthy source of information.

24 April 2020

IP Australia is Providing Free, Streamlined Extensions of Time for Parties Impacted by COVID-19

First aidUpdate 29 March 2021: IP Australia's streamlined process for obtaining extensions of time ends on 31 March 2021. For more details see: Free, Streamlined Extensions of Time to End at IP Australia, but COVID Impact Can Still be Considered Under ‘Normal’ Procedures.

IP Australia has announced that, as of 22 April 2020 up until at least 31 May 2020, most deadlines associated with Australian patent, trade marks, and design rights – including evidence deadlines in opposition matters – can be extended by up to three months, at no charge, if the extension is required ‘due to the disruptive effects of the COVID-19 pandemic’.  Free extensions are also available for many deadlines associated with plant breeder’s rights (PBR), although due to specifics of procedures and the PBR legislation these are being handled differently, and often on a case-by-case basis.

The streamlined process for requesting an extension of time involves filing the request online, via the eServices portal, and specifying that the extension is required for ‘circumstances beyond the control of the person’ concerned.  The only supporting documentation required is a simple declaration stating that the reason the existing deadline cannot be met is ‘due to the disruptive effects of the COVID-19 pandemic’.  IP Australia has provided a proforma document containing standard text that may be used for this purpose.  At present, eServices still requires the usual fees to be paid, however IP Australia will refund the fee, and is working to update eServices so that the fee can be waived.  It anticipates that this change will be in place by the end of April.

This streamlined process, and the waiving of fees, are (to my knowledge) unprecedented.  It is particularly notable that the process and fee waiver apply to extensions of time to file evidence in opposition proceedings, for which the normal extension fees are A$500 per month, and extensions have been significantly more difficult to obtain since commencement of the Raising the Bar reforms in 2013. 

In ‘normal’ times, a party requesting an extension of time is required to provide substantive evidence, in the form of a declaration along with any supporting documentation, which may be subject to close scrutiny by IP Australia to determine whether the extension is justified.  Depending on the circumstances, and the type of extension being sought, other interested parties may have the opportunity to comment and/or oppose the grant of an extension.  In oppositions, in particular, it is common for other parties to the opposition to challenge requests for extensions of time.

In these ‘abnormal’ times, however, I suspect that challenges to COVID-19 extension requests are unlikely to be entertained by IP Australia. Requests for extensions under section 223 of the Patents Act 1990, need not be advertised for opposition purposes if they are for no more than three months – as is the case under the streamlined process.  Regarding extensions to patent opposition deadlines under regulation 5.9, it appears that IP Australia intends to accept at face value requests based on the standard text, without requiring any further evidence or documentation, which may leave other parties with no real basis to challenge the justification for the extension.  In any event, if challenges to streamlined requests are permitted, they will cease to be streamlined, which would defeat the purpose of the process!

06 April 2020

COVID-19 Pandemic Yet to Bite Australian and New Zealand Patent Filings – But It’s Just a Matter of Time

VirusDespite the huge economic and social impact of the COVID-19 pandemic, the latest data shows that there has yet to be any significant change in rates of filing of patent applications in either Australia or New Zealand, compared with the same period in the past two years.  In fact, the only notable change in filing patterns in the first quarter of calendar year 2020 was not a decrease in applications, but an increase!  Specifically, the number of innovation patent applications filed using the service of patent attorneys appeared to spike briefly, by about 50%, coincident with the news that the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 had become law.

Other than this, however, it has been ‘business as usual’ up until the end of March 2020 for filings of standard and provisional applications in Australia and New Zealand, while self-filing applicants have continued to do their thing across all categories of application (including innovation patents).  Overall, the rate of standard application filings, including national phase entries (NPE) of international applications filed under the Patent Cooperation Treaty (PCT), in both Australia and New Zealand look to be on par with the first quarters of 2018 and 2019.  Provisional filings in Australia appear to be slightly down on the past two years, although there is no evidence of this being due to any effect of COVID-19.

None of this is greatly surprising.  The real impact of the global pandemic, with the introduction of restrictions, lockdowns, and shuttering of businesses in developed nations – including Australia and New Zealand – did not really start to hit until the beginning of March.  Most non-provisional patent filings are based on priority applications filed up to 12 months previously, or PCT applications typically filed between 18 and 31 months prior.  The incremental cost of these filings is relatively low, and applicants have not yet had time to assess the repercussions of the current crisis and make adjustments to their filing budgets and strategies.  Meanwhile, work on originating applications for new inventions, i.e. the majority of provisionals, filed in March would have commenced well before the seriousness of the COVID-19 pandemic became apparent.

But I expect that it may be only a matter of weeks before the crisis starts to manifest itself in patent filing rates.  As such, the data set out in this article might best be viewed as a baseline, i.e. a snapshot of what we might regard as ‘normal’ before the global economic downturn starts to take effect.

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