Why it is Unlikely that the Australian Government Will Invoke Crown Use Provisions in COVID-19 Crisis

On 19 March 2020, Australia’s Shadow Minister for Employment, Industry, Science and Small Business, Brendan O’Connor, wrote to his counterpart, Industry Minister Karen Andrews, to ask if the government had ‘explored how Crown use of patents may be invoked, particularly for urgent manufacturing of supplies such as facial masks’.  While the country’s response to the ongoing coronavirus pandemic has been, for the most part, blessedly free of blatant political point-scoring, this action appears to have been a rare exception.  Fortunately – though not surprisingly, considering the esoteric nature of the topic – the media mostly ignored O’Connor’s primarily self-promoting announcement. 

I have written to the Minister for Industry to ask if the government has explored how Crown use of patents may be invoked, particularly for urgent manufacturing of supplies such as facial masks. #auspol pic.twitter.com/0vuqQaukhT

— Brendan O'Connor (@BOConnorMP) March 23, 2020

One exception to the media silence was InnovationAus, which was happy enough to bumble ineptly through an effort to explain what it was all about, stating that ‘[u]nder the Patents Act, the federal government can use intellectual property without the permission of the copyright owner and does not have to obtain permission or provide compensation during a national emergency.’  Setting aside the tediously common confusion between patents, copyrights, and other forms of IP, this statement is also wrong in asserting that a national emergency excuses the government from providing compensation.  One thing the article does get right, however, is to note that the Crown use provisions of the Australian Patents Act 1990 have ‘virtually never been used before’.  And I do not really expect that to change in the foreseeable future.

Somewhat ironically, in this context, the name ‘coronavirus’ derives from the appearance of such viruses, which have a characteristic ‘fringe’ of rounded or petal shaped projections – reminiscent of the solar corona, the name of which is itself derived from the Latin ‘corona’, meaning ‘wreath’ or ‘crown’.  But no matter how linguistically apposite it might be to invoke Crown use in the fight against the SAR-CoV-2 coronavirus, and the disease COVID-19 that it causes, this is unlikely to happen.  The reason for this is that, in practice, there are at least three circumstances that would need to combine before the government would have any basis to engage ‘emergency’ Crown use provisions:

1. there would have to be a patent or pending application, in Australia, covering a product required for the country’s response to the COVID-19 pandemic;
2. the owner of the patent/application would need to be unwilling to meet the requirement by supplying the product itself, and/or by voluntarily licensing other manufacturers or importers to do so; and
3. for the emergency provisions to apply, the requirement would also need to be so urgent that there was insufficient time for the government to engage in any discussions with the owner to secure the required supplies of the product.

The following discussion relates to the new Crown use provisions that only recently came into effect, on 27 February 2020.

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Tags: Australia, COVID-19, Crown use, Public policy

Interactive Map: New Zealand Patent Applicants, 2017-2019

In my two previous articles I looked at patent activity in New Zealand: firstly, filing trends by domestic and foreign applicants over the past two decades; and secondly, leading patent applicants, recipients, and attorney firms in 2019.  While the data shows that patent filings by New Zealand residents have been in decline, I was curious to see how the domestic applicants that have still been using the system in recent years are distributed, geographically, around the country. 

By searching via the online patent search system provided by the Intellectual Property Office of New Zealand (IPONZ), it is possible to obtain tables of results that include addresses of applicants.  Usually these are physical addresses, although they can be distinct postal addresses (e.g. a post office box) or, more rarely, an ‘address for service’ such as a patent attorney or law firm.  Even so, in the vast majority of cases, the address returned is either an accurate representation of the applicant’s location, or a fairly good approximation to it.  I used the Google Maps Geocoding API to convert addresses into coordinates (i.e. latitude and longitude), and then into an interactive map using the Google Maps JavaScript API.

I am not sufficiently familiar with the geography and demographics of New Zealand to comment in the data with any authority.  However, it is fairly obvious (and unsurprising) that there is more activity on the North Island than the South, and that the highest densities of applicants and applications arise in the main centres of population and economic activity, i.e. Auckland and Wellington on the North Island, and Christchurch on the South Island.

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Tags: New Zealand, Patent analytics

US Companies Dominate NZ Patent Applications and Grants in 2019

In my previous article I looked at data on New Zealand patent filings and grants over the past 20 years.  The news was not great for domestic innovation, with the number of applications filed by New Zealanders in 2019 being more than 50% below peak levels achieved back in the early 2000s.  Over the same period, the proportion of US applicants each year rose from around 35% to nearly 45%.  It is therefore not surprising that US companies feature prominently in a list of the top applicants for New Zealand patents in 2019, making up 11 of the top 20.  By contrast, Auckland UniServices Ltd is the only New Zealand resident in the top 20, and this is only on the strength of a relatively large number of provisional applications.

Considering only trans-Tasman (i.e. Australian and New Zealand) applicants, the leader by a considerable margin in 2019 was Australia’s ResMed Pty Ltd.  And while New Zealanders featured strongly among those trans-Tasman applicants that filed six or more applications in 2019, this was again largely based on provisional filings.  The top seven trans-Tasman non-provisional applicants – collectively responsible for 132 filings – were all Australian.

Looking at grants, the top recipient of New Zealand patents in 2019 was Australian (ResMed again), while the remainder of the top 10 was made up of eight US companies and one Swedish company.

The leading patent attorney firm for New Zealand filings was A J Park, which filed a sufficient number of New Zealand applications to displace Madderns from the top 10 list of trans-Tasman attorney firms on a combined count of Australian and New Zealand patent filings.

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Tags: New Zealand, Patent analytics

New Zealand Patent Filing Data Shows a Two-Decade Decline in Applications by Domestic Residents

Since 24 February 2017, patent attorneys in Australia and New Zealand have been subject to a single regulatory regime, under which there is no such thing as an ‘Australian’ or ‘New Zealand’ patent attorney.  Rather, we are all ‘Trans-Tasman’ patent attorneys, qualified and registered to practice in both countries.  Looking just at Australian patent filings, as I have up until now, therefore provides only a partial picture of the market in which trans-Tasman attorneys operate.  However, I am now able to analyse New Zealand patent information, using data sourced from the online patent search system provided by the Intellectual Property Office of New Zealand (IPONZ).

Of course, Australia and New Zealand are separate countries, with their own distinct governments, policies, laws, and economies.  The behaviour of patent applicants in each country is obviously more strongly influenced by these factors than by the regulation of the patent attorney profession!  There is, accordingly, no reason to expect that filing patterns in New Zealand should mirror those in Australia, and in fact they do not.  I have previously bemoaned stagnation in patent filings by Australian residents, and the poor outcomes achieved by self-represented applicants.  However, it turns out that the situation is even worse in New Zealand, where filings by domestic applicants have been in serious decline for most of the past two decades, and a larger proportion of applications are filed without professional assistance.  Between 2005 and 2019, the proportion of non-provisional New Zealand patent applications filed by New Zealanders fell from around 15% to less than 6%, while in 2019 nearly a third of provisional applications and over a sixth of non-provisional applications made by domestic applicants were self-filed.

At the same time, foreign residents – most particularly from the US, but also from Australia – have become proportionately larger users of the New Zealand patent system.  Overall, and in contrast with global trends, there has been no growth in New Zealand patent filings over the past two decades, and New Zealanders have become ever more minor users of their own national patent system.

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Tags: New Zealand, Patent analytics

Countdown to the End of the Innovation Patent: Abolition Legislation Signed into Law

On 26 February 2020, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 received Royal Assent (i.e. was signed into law by the Governor General of Australia), becoming Act No. 9 of 2020.  I reported passing of this Bill in the Senate, with amendments, in November last year, noting that its passage through the House of Representatives (which eventually occurred on 5 February 2020) was a mere formality.  The full text of the Bill, as passed, can be found on the Parliament of Australia website, and should soon be available as the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 on the Federal Register of Legislation.

The main feature of the Act, about which I have written a number of times over the past few years, with varying degrees of ambivalence, is the abolition of Australia’s second-tier innovation patent system.  I briefly reviewed the history of the innovation patent’s downfall when reporting passage of the Bill through the Senate, and will not rehash this here.  The key point to note, however, is that the legislation provides for an 18 month window, commencing on the date of Royal Assent, before the phase-out of the innovation patent begins.  The following timeline has therefore now been established:

1. 26 February 2020 – Act receives Royal Assent;
2. 26 August 2021 – no longer possible to file new innovation patent applications, other than divisional applications based on applications filed on or before 25 August 2021; and
3. 25 August 2029 – final expiry date of all innovation patents (i.e. eight years after the last possible filing date of 25 August 2021).

The Bill originally provided a 12-month sunset period, however this was extended to 18 months by amendments in the Senate proposed by the Labor opposition, along with provisions requiring that a statutory review be undertaken to assess the impact on Australian small to medium enterprises of abolishing the innovation patent system, and make recommendations to facilitate access to standard patent protection for small business in Australia.  The review must commence within three months (i.e. by 26 May 2020), and provide a written report to the Minister for Industry, Science and Technology (currently the Hon Karen Andrews MP) within 12 months of commencement (i.e. no later than 26 May 2021).

To assist people with keeping track of the time remaining to file new innovation patents, I have added a countdown timer to the sidebar of this blog.  (You’re welcome!)  Notably, because 2020 is a leap year, and the Act received Royal Assent prior to 29 February and during daylight savings time, everyone has 25 hours more than would otherwise have been the case to file their final innovation patent applications!

While abolition of the innovation patent is, for most people, the big ticket item in the Act, it introduces a few other changes to Australia’s IP laws.  Read on for a brief summary of these.

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Tags: Australia, Compulsory license, Crown use, Innovation patent, Law reform, Omnibus claims