31 October 2022

So I started a (Second) PhD. Here’s Why.

Melbourne University (South Lawn)As long-time readers will be aware, it was almost exactly six years ago that I announced that I was leaving my job as a patent attorney with Watermark (which has since disappeared after being ‘integrated’ into Griffith Hack) to pursue other, vaguely articulated, interests.  Since then I have operated as an independent IP consultant.  I have undertaken some ‘traditional’ patent attorney tasks, including patent drafting and prosecution, continuing to work with some of my colleagues and clients from the Watermark days, as well as a few new ones along the way.  But I have also had the opportunity to engage in a range of projects that simply would not have been open to me within an attorney firm environment, including working with IP Australia on the IP Government Open Data (IPGOD) releases in 2018 and 2019, assisting a university research group with patent mapping and developing/documenting an IP strategy for a major grant application, and consulting to investment analysts on the Australian market for IP services. 

Some of the most interesting work I have been involved in over the past few years has come about as a result of the software tools that I have developed for processing and analysing Australian (and New Zealand) patent data, and the many articles I have published here making use of those tools.  I have also dabbled in machine learning (ML) and natural language processing (NLP) technology, using techniques from these fields for ‘fuzzy’ matching of entity names in patent data and for distinguishing between individual and corporate names in unstructured data (both of which were employed in my work on IPGOD, and are in use every day in my automated patent data updates), as well as in more speculative applications such as classifying provisional applications into technology fields based only on published titles.

A couple of years ago I started thinking about some important, but difficult, problems in patent law and policy that might be addressed using some of these kinds of technology.  For example, what if we want to measure the effect of different patent laws and examination processes in different jurisdictions?  The Australian government’s Productivity Commission thought this was a relevant consideration in its 2016 report on the nation’s intellectual property arrangements, recommending (among other things) that the legal test for inventive step should be modified (yet again – after it had only been adjusted in 2013) to bring Australia more closely into line with Europe.  IP Australia’s initial efforts to implement this recommendation have been abortive, and with the recent change in government seem likely to fall by the wayside altogether.

A bigger problem with this process, however, is that the Productivity Commission’s recommendations were themselves founded on shaky ground.  The majority of ‘evidence’ that the European Patent Office (EPO) grants narrower patents than IP Australia, or that it rejects applications that pass muster in Australia, is anecdotal at best.  Personally, I think that this is probably true, but I could not point you to a statistically sound analysis that would quantify this as a broad proposition.  The opinions of a few attorneys and researchers, based on personal experience or a handful of limited studies, is no basis for a nation to make significant changes to its patent laws in the hope of achieving some ill-defined policy objective such as ‘not granting broader patent rights than other jurisdictions’.

To make matters worse we did not know in 2016, and we still do not know today, what impact the 2013 commencement of the Raising the Bar patent law reforms has had on the scope of patents granted in Australia.  What we do know is that the reforms have not resulted in any reduction in acceptance rates of patent applications in Australia.  But that is not very surprising.  Over 90 percent of applications filed in Australia originate overseas, and their applicants are almost certainly seeking corresponding patent rights in other jurisdictions, including Europe and the US.  The fact that they might have been able to secure broader rights in Australia prior to 2013 does not mean that they actually would have pursued those broader rights, or that they cannot obtain commercially useful rights under the current law.  In either case, they have always had the option of simply filing claims in Australia corresponding with claims that have been allowed elsewhere.

If we want to understand, and quantify, the effect of examination in different jurisdictions, or whether granted patents are generally broader in some jurisdiction than others, or whether the Raising the Bar reforms have had any impact on the scope of patents granted in Australia, then we will need to somehow ‘measure’ the scope of patent claims.  We will need to be able to apply our measurement method en masse, so that we are not basing conclusions and recommendations on limited studies involving only small samples of related applications.  Our measure will need to be applicable and comparable across claims filed and granted in different places and/or at different times.  And it will need to be automated, so that we are not reliant on the labour of patent attorneys to evaluate countless thousands of patent claims.

How could we achieve that?  I don’t know, although I have done enough dabbling to have a few ideas.  But what I realised a little over a year ago is that this is not a problem that will yield to a bit of part-time tinkering.  It requires a concerted effort over a substantial period of time.  So I applied to undertake a PhD at the Melbourne Law School.  (Yes, I do already have a PhD, in electrical engineering.  Yes, I am probably looking back with rose-coloured glasses, considering that I completed that first PhD over a quarter of a century ago.  And, yes, I have already heard your ‘doctor doctor’ joke.)

I commenced at the start of October.  My primary supervisor in the MLS is Professor Andrew Christie (who will be well-known to many readers).  I also have a co-supervisor, Laureate Professor Tim Baldwin of the School of Computing and Information Systems at the University of Melbourne, who is an expert in NLP.

It is going to be an interesting and exciting three years or so, and I am sure that I will keep you posted on developments from time to time.

I will still be blogging, maintaining my patent data, and keeping an eye on developments in the Australasian patent attorney profession.  I will also remain available for small consultancy jobs, although I will be unable to take on larger projects now that I am a full time graduate student… again!


Post a Comment

Copyright © 2014
Creative Commons License
The Patentology Blog by Dr Mark A Summerfield is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 3.0 Australia License.