Last Tuesday night, I watched episode 2 of season 3 of the Australian version of the reality TV program for entrepreneurs seeking investors, Shark Tank. The episode featured a husband and wife team, Margaret and Peter Powell, who were after funding for their ‘Catch’n’Release’ anchor retrieval system. Their ingenious mechanism – that immediately impressed all of the ‘sharks’, along with many viewers including me – enables an anchor that has become caught under coral to be dislodged and retrieved without damaging the reef. Everything was going along swimmingly, until the question of patent protection was raised, and the Powells revealed that a patent application was filed in 1999, and now has less than three years to run. Four of the five ‘sharks’ very quickly declared themselves ‘out’.This got me thinking about what motivates Australian innovators to file patent applications. Obviously Peter Powell never intended that it would take him so long to develop and prototype his invention, or that it would be over 17 years and require the mentorship of a celebrity entrepreneur before he could finally secure a manufacturing deal and bring a product to market. With the benefit of 20/20 hindsight, it is clear that the Powells would have been better served by waiting to apply for their patent until they were further along the development path. No doubt, however, they would have had the usual concerns that the invention might be intentionally or inadvertently publicised, appropriated by someone, or independently developed elsewhere, if they did not move to secure their rights at the earliest opportunity. In other words, they might have been motivated more by fear, uncertainty, and doubt, than by a rational business strategy.
When economists refer to ‘rational choice’, or ‘rational actors’, they are talking about a theoretical construct that is assumed to take account of available information, such as probabilities of events, and potential costs and benefits in determining preferences, and to act consistently in arriving at a self-determined best choice of action. This is not, of course, how real people generally behave. Real people often fail to obtain and take into account all of the available information, make little or no effort to determine probabilities, costs, and benefits, and allow their decisions to be swayed by emotional considerations. Often, the more important the decision, the less likely it is that an individual will make a rational choice (in the economic sense).
Large corporations, on the other hand, tend to perform somewhat better in the ‘rational choice’ stakes. For example, a wealthy multinational corporation such as Google, IBM, Microsoft, or Apple, has little to fear over a decision about whether or not to file a patent application for a particular invention – the fate of its entire business hardly depends upon a single patent. A corporation is better-served by developing a strategy or formula for determining when it will, or will not, file for patent protection, based upon extensive information, experience, and sophisticated advice to which it has ready access.
It therefore seems to me that if we want to know what ‘rational’ behaviour looks like when it comes to Australian patent filing, we should look at how foreign applicants (which accounted for 91% of all standard patent application filings in Australia in 2016, according to IP Australia’s Australian Intellectual Property Report 2017) act. By comparing the behaviour of Australian applicants against this standard, we might be able to get a sense of just how rational, or otherwise, is their decision-making.
When I did this, I found that the behaviour of large Australian firms (defined as those having 200+ employees) very closely follows that of foreign applicants. Small-to-medium enterprises (SMEs) appear to be slightly less rational, while private individual applicants (the category into which the Powells fall) exhibit significantly different, and clearly sub-optimal, behaviour.
Last week Eric Sutton, who is Senior Patent Counsel at Oracle Corporation, published 
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.
Last week 
In my previous article (which you can 
Anybody starting a new technology venture based on some novel idea will need to address the issue of whether or not to apply for one or more patents to protect the idea. In fact, the question is not merely whether to apply, but also when to apply and what to apply for. Furthermore, these questions must be considered in the context of the overall business strategy of the start-up venture.
As regular readers will be aware, I do not usually write about trade mark matters on this blog. However, I am completely mystified by 
On Friday, 18 July 2014, I appeared on the 
In 
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 
I am very proud – and more than a little humbled – to have been included among the IAM Strategy 300: The World’s Leading IP Strategists, which was released on Monday this week. This annual guide is produced by Intellectual Asset Management Magazine (
For many small and medium sized businesses, it can seem difficult to justify spending thousands of dollars on the preparation and filing of a provisional patent application, let alone spending tens of thousands more on obtaining actual granted patents over the subsequent years.
There is 
One of the most common types of enquiry we receive in our day-to-day practice is about patenting of smartphone (i.e. iOS or Android) apps. Indeed, if we had a dollar for every prospective new client who had rung up or emailed to ask how to protect their ‘million dollar app’ idea, we would have… well… probably more money than we have made from actually preparing and filing patent applications based on these enquiries! Because most of them end up going nowhere, once we have had a conversation about the pros and cons of patenting.
As many readers will be aware, the America Invents Act was signed into law on 16 September 2011. While it will not take full effect – most notably replacing the first-to-invent priority rule with a first-inventor-to-file rule – until 16 March 2013, one provision that did come into effect almost immediately was a new prioritised examination procedure.
Last Friday, 3 February 2012, Apple and Samsung returned to Justice Annabelle Bennett’s Federal Courtroom in Sydney to resume hostilities for the new year.
