Former Patent Examiner Takes IP Australia to Federal Court Over Alleged ‘Abusive Management Practices’

A former IP Australia patent examiner who alleges ‘unlawful, unreasonable, unfair, inefficient, and abusive management practices’ at the government agency is seeking Federal Court review of Fair Work Commission (FWC) decisions that rejected his unfair dismissal claim.

Hendrik Johannes Liebenberg, who worked as a Patent Examiner from October 2012 until May 2024, has applied to the Federal Court of Australia for writs of certiorari and mandamus following unsuccessful FWC proceedings.  His case centres on allegations that routine quality assurance procedures at IP Australia constituted improper interference with his decision-making authority.  He has, additionally, escalated these claims into broader accusations about institutional practices.

For readers unfamiliar with the legal terminology, a writ of certiorari commands an inferior court or tribunal to set aside a decision, and is typically used when the decision-maker has exceeded their jurisdiction or made a jurisdictional error.  A writ of mandamus compels a public official or body to perform a duty they are legally required to perform, or to exercise their jurisdiction according to law.  Both are supervisory remedies allowing superior courts to oversee the exercise of power by decision-makers.

While it is more usual for the Federal Court to review administrative decision under the Administrative Decisions (Judicial Review) Act 1977, the difficulty for Mr Liebenberg is this case is that paragraph (a) of Schedule 1 to the ADJR Act excludes decisions made under employment-related legislation – including the Fair Work Act – from review.  This exclusion reflects Parliament's intention that Fair Work matters should be resolved within the specialist tribunal system rather than through general administrative law review.  To succeed, therefore, Mr Liebenberg will need to show that the FWC fundamentally misunderstood its jurisdiction, not just that it made errors within its jurisdiction.

The case provides a window into workplace dynamics at Australia’s primary intellectual property agency, though the FWC found no merit in the constructive dismissal claim after examining the circumstances of Mr Liebenberg's resignation.

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Tags: Examination, IP Australia, News, Patent Office

Why Would IP Australia Encourage Software Innovators to File for Patents?

IP Australia – the government agency responsible for administration of Australia’s patent, trade mark and design registration systems – has an important role to play in educating the public about the value of intellectual property and the requirements and processes for securing IP rights.  Generally speaking, I think it does a good job of this.  In particular, the News and Community section of IP Australia’s website includes links to many useful webinars and case studies that explain how the various types of IP rights work, and how they may be used to add resilience and value to a business.  This is (presumably) the work of the Communications, Public Awareness & Education team within the Customer Experience Group at IP Australia (see here for information on the organisational structure).  However, a recently-added case study suggests that this team may not be as familiar as it could be with the work of the Policy & Stakeholders Group or the Patents Examination Group.

I am referring to the case study Longtail UX: Patented Digital Products, which was published on 29 September 2022.  The case study discusses the experience of the Australian company Longtail UX (LUX), which describes itself as ‘the world’s first Customer Acquisition Platform’, in deciding to pursue patent protection for its technology.  Put very simply, LUX has developed a software platform that automatically generates additional pages – particularly for e-commerce sites – that are highly relevant to specific search terms by aggregating information (e.g. product descriptions) extracted from existing pages.  The advantage of this is that when someone searches for the specific term, e.g. using Google, the corresponding automatically-generated page will appear far higher in the search results than any of the original pages which were only partly relevant to the search.  Personally, I think that is a pretty clever idea.  And it must work fairly well, because LUX has been around since 2013 and counts many well-known online businesses (both in Australia and overseas) among its clients.

The case study tells the story of a business that started out with no IP protection strategy, and which first considered patents primarily as a marketing tool.  Later on, however, LUX came to realise that patents could add real value that could be important when raising capital or looking at a potential sale of the business.  Now – a number of years and two families of patent applications further down the road – LUX is on the verge of expanding into Europe, and extolling the virtues of engaging patent professionals to guide the company through the complicated process of obtaining patents in Australia and overseas.

Regular readers of this blog will already know what is missing from this encouraging story about patents adding value to an innovative business.  LUX’s inventions are computer-implemented.  And they are applied to the field of search engine marketing.  This does not necessarily mean that they cannot be patented, in Australia or elsewhere.  But it does mean that even if they can be patented, the process these days is very likely to be more complex, drawn out and expensive than would be expected in less contentious fields of technology.  Yet there is no mention of this in the case study, despite the fact that IP Australia has become a world-leader in pushing the limits of patent-(in)eligibility of computer implemented inventions through the courts, and is now one of the more challenging IP offices around the world for obtaining patents on such inventions.

So how is LUX actually faring with its patent acquisition strategy?  I have taken a look at the progress of its applications in Australia, the United States and Europe, and found that its fortunes have been more mixed than the case study reveals.

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Tags: Computer programs, IP Australia, Patentable subject matter

New Research Study from IP Australia Confirms IP Rights Ownership as a Signal to Identify Successful SMEs

If you are a policy-maker, prospective business partner or investor, IP Australia wants you to know that a useful way to identify small and medium enterprises (SMEs) with high growth potential is to look at their IP activity.  A new research report from the Office of the Chief Economist, titled Intellectual property rights and enterprise growth: The role of IP rights in the growth of SMEs, describes a study using data on the full population of Australian businesses – around 600,000 SMEs over the period 2002–2017 – to examine correlations between IP activity, employment, and growth of SMEs.  The study finds that, on average, SMEs that own IP rights (IPRs) are 3.5 times larger than SMEs with no IP rights (7 employees compared to 2 for SMEs with no IP rights).  Furthermore, rights-holders pay their employees better, with median annual wages being A$53,755 per employee compared to A$43,304 for SMEs with no IP rights.

My opening sentences above were very carefully chosen.  There is a risk that this study may be understood or reported in some quarters as implying the presence of a causal relationship between ownership of IP rights and business success.  It should go without saying, however, that (in the absence of evidence otherwise) correlation is not causation.  This is expressly acknowledged in the report itself (page 10), but IP Australia is also choosing its words carefully in promoting the report.  In information provided to media, the Director General, Michael Schwager, is quoted as saying:

This research paper presents evidence, for policy makers and business investors, that SMEs who file for IPRs are more likely to experience high growth than those who do not file for any IPRs.

On average, SMEs that own IP rights are around 3.5 times larger, are older and pay a higher median wage. SMEs filing for all the three types of IPRs, namely patents, trade marks, and designs, are the most likely to achieve high growth in terms of both turnover and employment.

To the casual reader, these statements might be taken to imply a causal relationship.  Saying that entities that do X are more likely to achieve Y arguably implies that X might be a good thing to do if your goal is to achieve Y.  But of course that is not true here.  If all anybody needed to do to succeed in business was to file a trade mark application, then I am sure everybody would be doing it!  An economist or statistician reading the above statements would merely find a few interesting facts regarding the observed relationships between IPR ownership, business growth, company size, longevity, and employee remuneration.  They would see nothing regarding any causal relationship among these characteristics.  All they would learn is that entities represented in the study data that have achieved Y are also more likely than average to have done X.

It is also notable that Michael Schwager’s statements specifically address policy makers and investors.  What about business owners?  Surely they would want to know how to maximise their prospects of success?  Well, of course they would.  But this study, by itself, tells them nothing about how to achieve that outcome.  Just because more successful businesses are more likely to own more IPRs does not imply that simply filing more applications for IPRs is the hidden secret to business success!

So, let’s delve a little more deeply into this report and see what else it tells us about IPRs and successful SMEs, and attempt to infer, from its findings, something about what makes an SME successful, and where other SMEs should be looking to find exemplars from which they can learn.

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Tags: Economics, Innovation policy, IP Australia