Have PCT Filings from Australia Been Affected by the Pandemic?

In 2021, at the height of the COVID-19 pandemic during which Australia’s two most populous cities spent long weeks under conditions of strict lockdown, the number of Australian standard patent applications filed by Australian resident applicants jumped by over 25%, to levels unseen since a rush on filings prompted by the Raising the Bar patent law reforms in 2013.  While there may have been a number of contributing factors, including the phase-out of the second tier innovation patent system in August 2021, it is nonetheless fair to say that there was no indication of any downturn in Australian filings as a result of the pandemic.

So what about international applications under the Patent Cooperation Treaty (PCT)?  Filing a PCT application is generally a more costly exercise than filing a domestic application, and usually signals the applicant’s intent to proceed with national applications in multiple countries.  Therefore the number of PCT applications filed might be a better indicator of the economic impact of the pandemic on innovative Australian businesses and institutions.  Unfortunately, information about a PCT application does not usually become publicly available until 18 months after the initial priority date which, in turn, is anywhere between six and 18 months after the PCT application itself was filed.  As a result, it is only recently that it has become possible to observe any impact of the pandemic on PCT filings.

In this article, I present data on PCT filings by Australian resident applicants that have been published up until the end of August 2022, with numbers extrapolated for the full 2022 calendar year.  What the data shows is that there has been no substantial effect, either positive or negative, on the total number of PCT applications filed annually by Australian residents since the start of the pandemic.  Drilling down to the fields of technology covered by the applications filed, there are a number of ongoing trends that predate the pandemic.  For example, applications relating to IT methods for management and civil engineering have continued pre-existing declines, while pharmaceuticals appear to be experiencing a period of growth.  The one field in which there may be a specific pandemic-related effect is medical technology (e.g. devices and instruments), in which the number of published PCT applications has notably increased since 2020.

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Tags: Australia, Patent analytics, PCT

Did the Pandemic Affect 2020 Australian PCT Filings?

As I reported back in January, there were some indications of weakening patent filings by Australian applicants in 2020.  Domestic applicants filed 10% fewer Australian standard applications than in 2019.  And while provisional filings overall fell by only 2%, those prepared with professional assistance – which involve greater expense, but are also far more likely to provide a sound basis for valuable future patent rights – fell by nearly 5%.  While perhaps not the sole factor, it is logical to assume that the business impact of the COVID-19 pandemic was somewhat influential in this decline.  Of course, Australian application numbers are not the only indicator of filing activity.  Each year, Australian residents file over 1,500 international applications under the Patent Cooperation Treaty (PCT), representing potential future filings not only in Australia, but also in any of the other 152 (as at the time of writing) contracting states.  So it is also interesting to know whether there was a corresponding decline in PCT filings by Australian residents in 2020.

The short answer is, possibly, but not as large as the decline in standard application filings.  While it is almost certain that some PCT applications filed in 2020 have yet to be published, and are therefore not visible, the worst-case decline in international filings by Australian residents is around 6%.  However, once all applications are published and available to be counted, there may be closer to 2% fewer PCT applications filed by Australians in 2020 as compared with 2019.  This would be consistent with a similar decline in the previous year, and with the recent trend in provisional filings, which predate the pandemic.

Furthermore, the pattern of PCT filings across 2020 was much the same as in previous years, with no indication of applicant behaviour being influenced by the progress of the pandemic.

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Tags: Australia, Patent analytics, PCT

Universities and Research Institutes Dominate Australian and New Zealand PCT Filings

In earlier articles I have looked at data on Australian patent filings and grants, as well as associated attorney firm performance.  While these numbers give us a good picture of application activity in Australia, they provide no information on the filing activities of Australian applicants in other jurisdictions.  Many innovators that are ultimately interested in securing patent protection in multiple countries choose to do so by first filing an international application (IA) under the Patent Cooperation Treaty (PCT).  In this article, therefore, I examine some recent PCT filing data for applicants, and patent attorney firms, resident in Australia and New Zealand.

As most readers will be aware, the PCT is an international treaty administered by the World Intellectual Property Organization (WIPO) that enables residents of any member country (of which there are currently 153, illustrated by the map at the top of this article) to file a single IA that has the effect of establishing a corresponding filing date in all of those countries, and associated regional patent systems.  While the PCT system is sometimes presented as a mechanism for improving efficiency and/or saving money, whether or not it achieves such benefits depends very much on each individual case, and the extent to which its centralised search, ‘preliminary examination’, and amendment processes enable subsequent national applications to be streamlined.  In practice, it remains necessary to file further applications in all countries of interest within 30 (or, for some countries, 31) months of the initial priority date, which must then each be examined under the corresponding national patent laws and procedures before any patent is actually granted.  All else being equal, therefore, a PCT application represents an additional cost, incurred prior to the various national costs, and may delay the examination and grant of national patents by up to two and a half years.

Despite this, the PCT system is popular with many Australian and New Zealand applicants.  In 2018, for example, Australian residents were named as applicants on over 1,700 IA’s, which compares favourably with the 2,756 domestic standard patent applications filed by Australian applicants in that same year.  The reason for this popularity is clear – even though it represents an additional cost, an IA defers a final decision on the jurisdictions in which patents will be pursued, along with the substantial further costs of filing and examination in multiple national and/or regional patent offices, for up to an additional 18 months.

This benefit of the international application system is clearly reflected in the most enthusiastic users of the system.  Of the top 20 Australian and New Zealand applicants named in PCT applications published over the three years between the beginning of 2017 and the end of 2019, 14 are universities or other public research institutions.  Of the remaining six, three are medical device manufacturers.  All of these are organisations that can particularly benefit for the deferral of further filing decisions and costs that the PCT system provides.

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Tags: Australia, New Zealand, Patent analytics, PCT

What Every Patent Practitioner and Applicant Needs to Know About Divisional Applications in Australia

Since commencement of the Raising the Bar patent reforms in 2013 there has been a potentially fatal trap in the Australian rules relating to divisional applications.  I have always thought it inevitable that someone would eventually fall into this trap – and practically certain that when it did happen, the applicant would be from the United States.  A recent decision of the Australian Patent Office, in which a US-based applicant has been denied the opportunity to convert an application into a divisional of an earlier filing, in order to avoid having one of its own previous applications cited as invalidating prior art, has confirmed my prediction: Magnum Magnetics Corporation [2019] APO 3.  Of course, this may not be the first time this situation has arisen.  To the best of my knowledge, however, it is the first time it has resulted in an actual Patent Office decision highlighting the issue.

In this recent case, Magnum Magnetics Corporation (‘Magnum’) filed an independent patent application in Australia when (as it subsequently turned out) the application should really have been filed as a divisional of an earlier application.  So far, its efforts to correct this error have been unsuccessful.

As most readers will be aware, a divisional patent application is a type of patent application which is based on a previously filed application, commonly called the ‘parent’ application.  A divisional application inherits the parent’s filing date and, to the extent that it discloses and claims subject matter that was also present in the parent, those claims are entitled to the same priority date.  The primary purpose for which divisional applications were originally created was to enable further inventions that may have been disclosed in an initial application to be protected, since as a general principle a single patent may only claim a single invention.  However, over the years many other practical and strategic uses of divisional applications have been developed.  For example, it is permissible to update or add new subject matter in a divisional application, although any claims based on the added matter will not usually be entitled to the benefit of the parent’s priority date.

Historically, it has been very easy in Australia to convert between ‘regular’ and divisional applications, requiring only a straightforward amendment to the patent request.  Such an amendment could be made at any time during the lifetime of the application/patent.  However, the Raising the Bar reforms changed the rules, adding additional restrictions on when an application may legitimately be converted to a divisional.  These restrictions will rarely be an issue for applicants that are making appropriate and well-informed use of the Australian patent application system.  However, a failure to appreciate the limitations of the Australian system – and, to be honest, this is something I have seen on a number of occasions from US practitioners, since their system is quite different – can get an applicant into trouble.

Unfortunately, this appears to be what happened to Magnum, although I think that there may still be some hope of saving its application.

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Tags: Australia, Divisional applications, Extensions of time, International treaties, Paris Convention, PCT, Priority claim

How to Patent Your Invention in Australia and the US

For many of the Australian clients I work with, the most important markets are Australia (i.e. the ‘home’ market) and the US (because of its size and relative accessibility).  This means that when it comes to protecting their innovative technologies, obtaining patents in these two countries is at the top of these clients’ lists of priorities.  I am therefore often asked how best to achieve this objective, how much it will cost, and how long it will take.

The typical ‘lawyer’ answer is, of course, ‘it depends’!  Do you want patents only in Australia and the US, or are there other countries of interest?  When and why do you require these patents?  Do you want to obtain patents as quickly as possible, or are there strategic advantages in drawing out the pendency (and finalisation of the scope of rights) for as long as possible?  What is your budget for the patenting program, both in the short term and over the coming years?

Assuming that you are able to answer these questions, it should be possible to develop a strategy that meets all of your requirements.  In this article I will go into further detail of one fairly typical and effective approach, along with some of the relevant considerations and potential variations.

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Tags: Australia, Examination, Paris Convention, Patent filing, PCT, PPH, Strategy, US

How International Treaties Help Inventors With Patent Strategy

There is no such thing as a ‘world patent’.  As matters currently stand – and as I expect them to remain beyond the term of my natural life – there is no country on Earth that is willing to completely forego the right to determine what qualifies for a patent monopoly within its borders, or the right to collect ongoing fees to maintain this privilege.

So, anybody wishing to obtain patent protection in multiple markets will necessarily need to pursue some form of application in each corresponding jurisdiction.  With every country having its own patent laws (and this is true even in places, such as Europe, where some form of regional process is available), obtaining all of these patents can certainly become a complex, time-consuming, and expensive procedure.

Fortunately, however, over the years a majority of countries have got together to establish some basic standards, agreements and conventions that provide at least some certainty and simplification for inventors and companies seeking protection for their inventions in multiple jurisdictions.  In this article I want to talk briefly about the three I regard as being the most significant:

1. the Paris Convention for the Protection of Industrial Property, which ensures that all members will recognise the priority of an application filed in another member country for at least 12 months;
2. the Patent Cooperation Treaty (PCT), which creates a central mechanism for filing an ‘international application’ that can delay the costs and complexity of individual national/regional filings for at least 18 months longer than would otherwise be possible; and
3. the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which sets minimum standards for patentability, guarantees non-discriminatory treatment of applicants and applications, and sets limits on the scope of national laws to exclude specific subject matter from patent-eligibility.

Knowing a little about these three international agreements is a good start on developing an international patenting strategy, although I would always recommend that you ultimately seek the assistance of somebody who works within these systems all the time, and is familiar with their many detailed benefits, and pitfalls.

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Tags: Conventions, Paris Convention, Patent Cooperation Treaty, PCT, Treaties, TRIPS

Where Can You Not Get a Patent Via the PCT?

On 3 August 2013 Saudi Arabia became bound by the provisions of the Patent Cooperation Treaty (PCT), while the Islamic Republic of Iran will become bound on 4 October 2013.  Any international patent application filed on or after that date will therefore entitle the applicant ultimately to proceed in any of 148 contracting states.

So many countries are now bound by the PCT that it is almost easier to think in terms of which countries are not members of the international application system than to keep track of those which are.  If you want to file a patent application, and to keep your options open for as long as possible (typically until at least 30 months after your initial priority filing date), then a PCT application is definitely the way to go about it.  However, you do need to think about whether there are any countries which may be important to you, but which are not PCT members.

So which countries are not PCT contracting states?  And how many of them might you really care about?

This article attempts to answer these questions, although of course some disclaimers are necessary.  While I have made every effort to verify details from multiple sources, for some countries reliable, up-to-date information is not easy to come by.  To the extent that the information here is accurate, I can vouch for it only at the current time, i.e. 14 August 2013.  In other words, despite all due care, I take no responsibility for the consequences of relying on this information, and recommend that you always seek professional advice appropriate to your specific circumstances.

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Tags: International treaties, PCT, Strategy

‘Raising the Bar’ on International Applications

Much of the focus regarding Australia’s ‘Raising the Bar’ patent reforms has been on the substantive changes to the law, such as the higher threshold for inventive step, enhanced disclosure requirements, and the new utility standard.

However, there have been a number of procedural changes, also.  These affect all Australian applications, including those filed as the national phase of an international application under the Patent Cooperation Treaty (PCT).  Indeed, since most PCT applications are prepared to meet the substantive legal standards of a range of countries, including the US and Europe, it is probable that many international applicants will not be as much concerned about the legal reforms as about the procedural changes.

Applications filed prior to 15 April 2013 are theoretically able to proceed subject to the old law.  This includes PCT applications – for which the effective Australian filing date is the international filing date.  However, this is only the case if examination was also requested prior to 15 April 2013.  An examination request cannot be validly filed on a PCT application until after it has entered the national phase in Australia.  It therefore follows that any PCT application proceeding in Australia on or after 15 April 2013 must, by definition, be subject to the law and procedures as amended by the Raising the Bar reforms (including the implementing regulations).

The Australian National Chapter of the PCT Applicant’s Guide [PDF, 65 kB] has recently been updated to reflect the procedural changes introduced by the Intellectual Property Laws (Raising the Bar) Act 2012.  This seems like a good opportunity to inform (or remind) readers of the current requirements and processes during the national phase in Australia.

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Tags: Australia, Patent filing, PCT

Hate Bad Patents? You Could Try Being More Observant!

It is widely believed that there are a lot of ‘bad patents’ around – ones that the examiner should have rejected, if only the search had turned up the most relevant prior art.

There is certainly some truth to this belief.  Examiners in all patent offices are only human, they have limited time to examine each application which comes before them, and the searching tools available to them are imperfect.  Indeed, there is no such thing as a perfect search, because the world’s stores of public knowledge are just not fully available in a readily searchable form.

In this context, crowdsourcing of patent searching makes a great deal of sense.  Patent laws and regulations are increasingly making provision for ‘third parties’ (i.e. people who are neither the applicant, nor the examiner) to submit information that may be pertinent to the validity of claims in filed patent applications.  For example, under provisions of the America Invents Act, an expanded third party submission program will commence on 16 September 2012.

The latest passenger on the bandwagon is the World Intellectual Property Organisation (WIPO), which from 2 July 2012 is accepting ‘third party observations’ on pending international applications (IAs) filed under the Patent Cooperation Treaty (PCT).

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Tags: Examination, Novelty, Obviousness, PCT, Prior art, WIPO

Australian Patent Attorneys Accused of ‘Crippling’ Entrepreneurs

An article appeared this week on the news and information website startupsmart.com.au under the by-line of Michelle Hammond, entitled ‘Patent attorneys under fire over “crippling” fees’.

The article opens with the allegation that:

Australia’s patent attorneys have come under attack for charging too much for patent filing, with claims that some attorneys charge as much as $150,000 to file patents overseas.

Before we turn to the substantive issues raised by the article, we note that this opening raises (at least) the questions of who has launched this ‘attack’, which attorneys are charging ‘as much as $150,000’, and what exactly are these fees covering?

The answer to the first question is pretty clear from the remainder of the article, which shows all the hallmarks of modern media release ‘journalism’.  The source of this particular story is the foreign filing service provider inovia, which is just one of a number of such companies that have emerged in recent times to compete directly with ‘traditional’ patent attorneys in the specific area of filing foreign patent applications, and particularly handling PCT national phase entry, European patent validation and patent translations.

The answers to the second and third questions are far less clear, and the StartupSmart article really serves only to muddy the waters further with claims that are in dire need of some sanity-checking.

In this article, we will look at the differences between the filing services provided by patent attorney firms, and those of companies like inovia.  We will also address some of the other assertions in the StartupSmart article.  And, despite our obvious potential for self-interest in these matters, we will endeavour to do so in a reasonably fair and balanced manner!

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Tags: Intellectual Asset Management, International treaties, Patent attorney profession, Patent filing, PCT

Microsoft Tops Australian Patent Grants for 2010

‘Tis the season for statistics, as everybody looks back on the year that was 2010!

As we previously briefly reported, patent research company IFI CLAIMS Patent Services recently released its annual list of top US patent recipients for 2010.  Notably, companies in the information and communications technologies (ITC) sector dominated the list, which was headed by IBM with an astonishing, and record-breaking, 5896 US patents issued in 2010. IBM has now topped the US patent charts for 18 consecutive years.

This got us to wondering – how would the corresponding statistics for Australian patent grants compare?

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Tags: Australia, China, News, PCT, Statistics, US

So You Want to Attack an Invalid PCT Application...

The World Intellectual Property Office (WIPO) has been working on a number of enhancements to the international patent application system operating under the Patent Cooperation Treaty (PCT), in response to a study by the International Bureau (IB) entitled “The Need for Improving the Functioning of the PCT System”.

According to the current (July-August) edition of the PCT Newsletter, a number of recommendations were endorsed at a recent meeting of the PCT Working Group.

One of these, reportedly due to be implemented in the near future, is to develop an online system to accept third party observations in relation to pending PCT applications.  This will enable any person having information (typically prior art) relevant to the validity of claims in a pending PCT application to submit that information via a web form hosted on the WIPO site.  The submitted documents would be accessible to international examiners, to examiners in the various national offices, and to third parties (via the PATENTSCOPE service).

Similar provisions are already in place at some national patent offices.  For example, any third party can submit observations and pertinent prior art in respect of any application pending before the European Patent Office (EPO), which will generally be considered by the Examining Division.  In Australia, section 27 of the Patents Act 1990 provides for any person to submit information to the patent office that may affect the validity of the claims of a patent application.

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Tags: Examination, PCT, WIPO