IP Australia Research Challenges Claims of Country’s Poor Industry-Research Collaboration Record

On 26 April 2017, IP Australia celebrated Alien Day World Intellectual Property Day with the launch of the Australian Intellectual Property Report 2017 (‘IP Report’) and the release of the Intellectual Property Government Open Data (IPGOD) 2017.  The Report includes a summary of latest IP trends and statistics across all IP rights administered by IP Australia (patents, trade marks, registered designs and plant breeder’s rights).  As in previous years, it also presents results from specific research projects undertaken within the Office of the Chief Economist.  This year, IP Australia’s researchers have taken on an often-cited (see, for example, this article from The Australian or this one from InnovationAus.com) statistic that placed Australia last (33^rd out of 33 rated countries) in the OECD for collaboration on innovation between industry and higher education or public research institutions over the 2008-10 period.

The OECD assessment featured in its 2015 Science, Technology and Industry Scoreboard, and was based on data provided by the Australian Bureau of Statistics (ABS) survey.  That data, in turn, was based upon a survey of Australian businesses conducted in relation to activities in the 2010/11 financial year (the most recent ABS data on ‘Innovation in Australian Business’ is available from its website).  This measure has been criticised as failing to account for the particular nature of the Australian market – having a small number of large universities and research organisations, and a large number of small firms – and of failing to compare apples with apples, given that most of the other OECD nations used measures  based on a European survey not implemented in Australia.

IP Australia’s research takes up that criticism, noting that ‘asking those firms how often they collaborated with a university is likely to under-estimate the totals’.  Instead, it seeks to use an objective, data-driven, measure of collaboration – namely, the incidence of universities co-filing applications for a patents or other IP rights with industry-based partners.  On this measure, Australia ranks 13^th of  35 countries, above average and ahead of many countries that rated very highly in the OECD rankings, such as Finland (first on OECD data), Slovenia (2), Austria (3), Hungary (4), Sweden (5), Germany (7), Norway (8), Denmark (9) and Japan (12).

Personally, I do not believe either set of data.  But at least we now have two different perspectives on measuring collaboration which may encourage policy-makers to view the OECD rankings with the scepticism they deserve!

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Tags: Australia, Patent analytics, Public policy, Public research

Regulatory Board Recognises Validity of Publicly-Listed Patent Attorney Structures

The Trans-Tasman IP Attorneys Board (TTIPAB) – the regulatory body formerly known as the Professional Standards Board for Patent and Trade Marks Attorneys – has released a consultation paper as part of its review of the Code of Conduct for Patent and Trade Marks Attorneys 2013 (‘Code’).  This review was mandated under the arrangement between the Australian and New Zealand governments to merge the registration and disciplinary regimes for attorneys in the two countries, which came into effect on 24 February 2017.  Any amendments to the Code that may be necessary or appropriate in response to the creation of the Trans-Tasman attorney regime must be made within 12 months of its commencement, i.e. by 23 February 2018.

In addition, as I mentioned in an earlier article regarding the consolidation of a number of Australian IP attorney and legal firms into publicly-listed groups, the TTIPAB commissioned Professor Andrew Christie of the University of Melbourne to examine these structural changes in the profession and advise on whether any further regulatory amendments are required in light of these developments.  Professor Christie has delivered his report, and the TTIPAB has consolidated his findings, and its corresponding proposed revisions to the Code, into the present consultation paper.

Broadly speaking, and consistently with my expectations, no actual issues have been identified with the current ‘listed group scenario’ (as the consultation paper calls it).  While these types of arrangements have the potential create conflict-of-interest situations that cannot arise with traditional independent firm structures, the existing listed holding companies, IPH Limited (ASX:IPH), Xenith IP Group Limited (ASX:XIP) and QANTM IP Limited (ASX:QIP), have all recognised the issues, obtained relevant legal advice, and have implemented a range of measures to manage the associated risks.  The TTIPAB appears generally satisfied with these measures.  The consultation paper states, in particular, that:

The Board recognises that the listed group scenario is a valid legal structure when considered from the perspective of corporations law. The Board also recognises that an equivalent scenario in which the holding company is a private company would also be a valid legal structure. The Board is of the view that attorneys should be free to adopt whatever valid legal structure best suits their commercial interests. Accordingly, the Board does not propose to prohibit or restrict the ability of attorneys to deliver their services through the operation of groups of incorporated attorney firms owned by a holding company, whether that holding company be a publicly listed company or a private company.

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Tags: Australia, Patent attorney profession

University of California Unsurprisingly Appeals Decision to Terminate CRISPR Patent Interference

In February, I reported the decision of the US Patent and Trademarks Office (USPTO) Patent Trial and Appeal Board (PTAB) in the patent interference proceedings initiated by the University of California (‘UC’) against the Broad Institute of MIT and Harvard (‘Broad’) in relation to CRISPR/Cas9 gene editing technology.  That decision was that there is ‘no interference in fact’, meaning that Broad’s development of the CRISPR/Cas9 system for use in eukaryotic cells (i.e. complex cells with, among other characteristics, distinct nuclei) was a non-obvious advance over UC’s development of the system for use in simpler prokaryotic cells (specifically, bacteria), and that there is thus scope for both parties to hold distinct patents.  At the time, I noted that the PTAB decision was subject to a possible appeal to a US Federal Court – most likely the specialised Court of Appeals for the Federal Circuit (CAFC) – and predicted that UC would file an appeal, in view of the substantial commercial interests at stake.

I am therefore not at all surprised to now be reporting that UC has indeed appealed to the CAFC.  In a press release announcing the appeal, UC has confirmed that it ‘seeks to have the PTAB reinstate the interference’, and quotes Edward Penhoet, a ‘special adviser on CRISPR to the UC president and UC Berkeley chancellor’ as saying that:

Ultimately, we expect to establish definitively that the team led by Jennifer Doudna and Emmanuelle Charpentier was the first to engineer CRISPR-Cas9 for use in all types of environments, including in non-cellular settings and within plant, animal and even human cells

Broad has responded with its own media statement saying, in relation to the appeal, that:

Given that the facts have not changed, we expect the outcome will once again be the same.
We are confident the Federal Circuit will affirm the PTAB decision and recognize the contribution of the Broad, MIT and Harvard in developing this transformative technology.

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Tags: Biotechnology, CRISPR, Genetic technology, Interference, US

New USPTO Data Set Reveals Recent Trends in Software and Business Method Patent Grants and Filings

The US Patent and Trademarks Office (USPTO) has released a new public patent data service, which it calls the Patent Examination Data System (PEDS).  PEDS is intended to replace the PAIR Bulk Data (PBD) service, and has a very similar interface for filtering, viewing and downloading bulk US patent data, as well as an application programming interface (API) for live access.  Although PEDS is still under development, is missing some data fields that are present in PBD, and currently provides fewer filtering options than PBD, it is already ahead in a number of important respects. 

Firstly, where I have previously noted that the PBD set was incomplete in relation to patents granted in 2016, this problem seems to have been resolved in PEDS.  Secondly, PEDS includes the ‘transaction history’ for each application in the data set.  Readers familiar with the USPTO’s Patent Application Information Retrieval (PAIR) online system will be aware that the PAIR interface includes a ‘Transaction History’ tab that displays a list of all actions and events that have taken place on the file, along with their corresponding dates.  This information is now included in PEDS.  The USPTO has indicated that, in future, PEDS may include enhancements to search additional fields, additional data from tabs in Public PAIR, and the Image File Wrapper (IFW).

The availability of this new, and more complete, data set has enabled me to revisit the analysis of software and business method patents that I reported back in January, with the benefit of more than a year of additional data.  As a result, I have been able to observe how the trends in patent grants have progressed since the end of 2015.  In short, there has been no further change.  The rate of grant of patents assigned to software Art Units within the USPTO continues to track – and even slightly exceed – the overall rate of grants across all technologies, while business method patent grants remain in the doldrums, flat-lining at the rate to which they fell shortly after the US Supreme Court’s Alice decision in June 2014.

The additional data has also enabled me to look at trends in filing behaviour, which may be indicative of how applicants have responded to Alice and the USPTO’s subsequent changes in examination practice and guidance as applied to software and business method patent applications.  Interestingly, this data indicates that the rate of applicants filing for patents in relation to ‘business method’ inventions has been in steady decline since June 2014, but that there has been an equally steady increase in the rate of filing of applications for software inventions.

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Tags: Business processes, Computer programs, Patent analytics, Patentable subject matter, PEDS, US

IP Australia Updates Website with Better Advice for Patent Applicants

Back in February, I presented an analysis of Australian patent application data showing that self-represented applicants tend to achieve extremely poor outcomes relative to those who seek professional advice and assistance.  In doing so, I pointed out that IP Australia’s web site provided only the most minimal encouragement for prospective applicants to engage a patent attorney before proceeding.  As I reported further in March, this did not pass unnoticed at IP Australia, which was quick to point out that they have a downloadable PDF document (A guide to applying for your patent, 3.89MB) which includes a number of stronger statements about the benefits of obtaining professional assistance.  However, this document was not easy to find, since it was not linked from any of the primary informational/educational content on the site.

Via a tweet at the time, IP Australia promised that they would look into the issue, and see where it might be possible to make improvements.

@patentology we'll look into it some more to see where we can make improvements & facilitate additional links, thnx for the feedback

— IP Australia (@IPAustralia) February 23, 2017

I am really pleased to report that IP Australia have been true to their word, and the following pages on their web site now include recommendations for prospective applicants to seek professional assistance and/or links to the downloadable patent application guide:

1. Patent basics
2. Types of patents
3. What can be patented
4. Decide if you have a standard patent
5. Apply for a standard patent
6. What to include in your application
7. Decide if you have an innovation patent

Professional Advice is More Than Application Assistance

If you are an innovator, the benefits of speaking with a professional adviser, such as a patent attorney, before charging straight for the patent office go far beyond just making sure that you have invented something patentable, and that you file a quality application with good prospects of protecting the invention, although it is these aspects which which IP Australia is naturally most concerned.  A patent attorney should also be informed of your specific commercial objectives and can advise on the most suitable overall filing strategy.

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Tags: Australia, Innovation policy, Patent attorney profession, Patent Office, Public policy