Brian Goldberg (E|K|M Patent & Trademarks) – Australia

My name is Brian Goldberg. I’m from EKM Patent & Trademarks inAustralia.

I’ll read my slides, just because I know then that definitely sticks to the time limit and Kimberley will invite me
back next time.

I thought I’d start with something that might be slightly different, and then go through the other scope of the patent aspects that we’re looking at, and, that’s an innovation patent. In Australia we have something known as an ‘innovation patent’ and it’s intended to provide IP rights for those incremental- and lower-level inventions that would not sufficiently be inventive to qualify for a standard patent. So, it’s got a lower threshold than a normal inventive, so all you need is an innovative step.

Some benefits are:

• that from an enforcement perspective, once you have it certified, it’s a process as well that automatically gets granted, and then you need an examination for certification.

• Once it’s certified, it’s legally enforceable – and that’s probably its strongest benefit.
• You can still convert it back to a standard patent, but there’s a quick time-limit of a month before this one will be granted.
• It’s fast, because you instantly get a granted innovation patent.
• And, because of the lower-threshold, it’s actually harder to invalidate, so you can be in a strong position to
  enforce it.

Some further benefits:

• If examined and certified, the innovation patent offers the same level of protection. And, in Australia, there’s not that many infringement matters in the patent area, due to the cost in other areas and the time taken. But, this is certainly an avenue that patent holders are looking at to enforce their rights.
• It’s cost-effective both from a filing point of view, as well as knowing that you’re going to get it certified and
  granted. It means you can put the budget in place, or your clients can put the budget in place to do the enforcement quite confidently.

However there are limits. The limits are:

• It’s Australia only.
• It’s 8 years. You only get the rights for 8 years, not 20.
• There’s only 5 claims allowable in an innovation patent. So you’d have to think through the 5 most relevant
  claims.
• And as I said, initially it was probably taken not so quickly, but now it’s certainly being used in the IP portfolio management of companies inAustralia.

So, moving to the normal one. The deadline in Australia is 31 months from the earliest priority claim. And just to make a note, there’s no Power of Attorney or Authorisation Agent required for National Phase or Convention applications.

Extensions –
So as long as you don’t unintentionally miss doing something or paying the fee, you can apply for an extension under Section 223 of the Patents Act. So probably the only thing you could do to muck this up is send us an email saying ‘Our client does not intend to proceed’ and then a month letter get an email ‘Oh, by the way, he’s changed his mind; he wants to proceed’. So, if you don’t do that it’s usually okay. The 2 main reasons are an error or omission by
yourself, an employee, an agent or attorney, or circumstances beyond your control – delays in post, courier, sickness, accident – and that’s not a definitive list, so we could add into there. However, it doesn’t cover for lack
of funds to pay excessive fees. So, if the client didn’t continue because of fees at the time, that’s not a strong enough reason. And the applications for an extension of more than 3 months are advertised by the patent office.

In terms of patent fee increases – on the 29^th June the government approved increases in patent fees, which came into affect on 1^st August. The total patent revenue for the financial year had increased by 6.8%, so that’s a small indication for us. Though, probably what’s important from a day to day basis if you are dealing with Australia
is that our dollar has actually increased. Now, for the first time in my life, (so closer to 40 years) it’s above parity with the U.S. dollar (and I haven’t checked today, but it was $1.07 when we left, which is very unusual – 10 years
ago it was 50 cents to U.S. dollar, then it lingered about the 60, 70, and now it would be above parity).  So the firms,
including us, we all haven’t worked out where we’re going to hedge our bets, but that has increased the costs, and something to note for a daily basis.

Acceleration – Presently it’s taking about 3 years to get an examination report. In fact, what IP Australia, the governing body in Australia have done, probably quite at the forefront of patent examination, is that they’ve set up a
patent factory outside the patent office in a capital city, just across the road from us actually in Melbourne, and they’ve just got patent examiners sitting there in a factory environment churning out patent examinations. So, they’re very well set up for patent examinations and to attract those people they need to relocate to the main cities. And, the main reason that you’d want to accelerate, or that’s accepted are either, possible infringement reasons that you’d like to enforce you rights, as well as commercial reasons, such as, entering into license agreements, because in
Australia we understand that there’s bigger markets internationally. So, that’s a good reason to have your patent accelerated, and then it takes about 10-15 weeks, which is quite reasonable, and, as I said, they’re set up quite well to do that.

We also have green technology, so if you want your patent application to be examined more quickly, and it falls into a green technology, there is an avenue. I don’t think any emails required. I think you just write ‘green technology’ and you get that opportunity.

And, as well we’ve entered with the US into the patent prosecution highway programme. I’ll just read out the
main aspects that need to confide to, to go along that path. The Australian claims must be sufficiently correspond with one or more of the claims of the allowable claims in the US application. And, it must be linked to a common US priority claim, or have a common initial filing date. The Australian application must not have already been examined by the Australian Patent Office. So, nothing too different there, and we’re part of that.

I’ll say very quickly, in terms of software and business methods. The answer is yes.

Yes to software – a mode or manner of achieving an end result of what we term ‘artificially created’. A lot of flowcharts in the patent applications; and, very popular at the moment in Australia.

I’ve got to admit, being a smaller market, it’s popular in the sense that they would like a big US firm to say ‘We need that exact application’, rather than do it themselves in Australia. So they do look to protect the patent as the only form of asset in Australia, and then seek a license deal. So it is very popular to see a lot of drafted I.T. or
software patent applications, as well as business methods – the answer is yes.

There is a slight differentiation with the business method. We’d like a technical solution or a technical advantage, but once again, artificially created gets you in the scope of justification.

Disclosure requirements – well, there’s been a removal of the obligation to lodge search results. So, it’s now relatively straight forward and the onus has been taken away.

And my final slide, what’s the relevance of the Australian market? – Well, we are diverse, and we do have various aspects:

• Certainly medical devices rate high -
  we have a high level of medical expertise.
• Hardware electricals.
• Software and business methods, but
  for that reason, more than being and end market.
• Mining is certainly a boom at the
  moment that’s running our whole economy, but is dominated by some larger
  players, and quite controlled in Australia.
• Household goods
• Sports – definitely in the sports area.
• Transport
• Chemical biotechnology  and,
• Pharmaceutical

So we do cover a wide range and in fact our clients also cover that aspect, so it is a broad area.

So thank you very much.