A Strategy to Overcome Protracted Australian Patent Examination

My colleague, Hedie Meka PhD , has just written an article setting out a strategy for overcoming protracted prosecution in Australia. As the article shows, there appears to be a significant bias in favour of applicants that request a hearing, as opposed to continuing with responses to subsequent examination reports. This is particularly the case with rejections based on lack of patentable subject matter. These arise regularly in the case of computer implemented inventions. The article sets out 16 matters by way of example. The Applicant was successful in 12 of those matters. Hearings before the Australian Patent Office are relatively informal and can be conducted in person or by written submissions. 

Grace Periods and the "Whole of Contents" Doctrine

My colleague, Hedie Meka PhD , has just written an interesting article on recent decisions from the Australian Patent Office dealing with our "grace period" provisions. It appears that the current approach broadens the rights of an applicant to include grace period protection for "whole of contents" citations published after the filing date of the complete application. The purpose of these grace period provisions is that they allow an applicant to achieve valid patent protection in light of a public disclosure, by the applicant, of the invention before the filing date of a patent application accompanied by a complete specification. The provisions also apply to a public disclosure of the invention without the authority of the applicant. According to our Patents Act, the contents of a patent application with a priority date earlier than the filing date of an earlier filed patent application can be taken into account when assessing the novelty of an invention defined

Amending Granted Patents

Patent owners are often keen to start sending off threatening letters as soon as a patent is granted. But this is not a time to over-reach. Our litigation regime is bloated. First of all, a barrister is required because they, and not solicitors, have the right to represent litigants in the Federal Court. However, a barrister usually needs to be instructed by a solicitor. The solicitor will be responsible for briefing the barrister and preparing the necessary application papers. However, it is not often that a solicitor will have a grasp of patent law. This is the role of a patent attorney. So it's not hard to understand why litigation can be expensive. Just sending off a cease-and-desist letter may start an expensive and resource-draining process. It's not wise to allow a cease-and-desist letter to be ignored. Once the decision has been made to send off the cease-and-desist letter, the patent owner should be fully committed to filing an application at the Federal Court to b

For the Record

A patent is a publicly available document. That document has no shelf life. I can get copies of patents that were published 150 years ago. Why is this a big deal for patent attorneys? These documents are not novels or even journalistic pieces. They are legal documents. For the first 20 years or so of their lives, they are supposed to provide patentees with a monopoly in the claimed invention. This means that they can be pored over by interested parties, like other patent attorneys. It's a source of anxiety for those of us who take pride in our work. Or perhaps it's a case of fragile egos. The point is that our work can undergo intense scrutiny at least for 20 years. If that were not enough, our correspondence with patent examiners is also available to the public. This correspondence is often a record of legal arguments that we make in support of our clients' patent applications. The United States has an interesting legal doctrine called "Prosecution History Est

Missed your Deadline for National Phase?

Have you missed your deadline for national phase entry? Perhaps all is not lost. Here is a useful guide by my business partner, Hedie Meka PhD : . In short, if there has been a genuine error or omission resulting in the missed deadline, then it may very well be possible to get that national phase entry in Australia on track. This applies to most statutory deadlines in Australia.

Understanding the Role of Patents and Commercial Activity

Overvaluing a patent portfolio can lead to complacency. In my 30 years of experience, I have all too often had to admonish clients that without commercial success, an associated patent portfolio may have little value. A patent that is not marked-tested is not that attractive to investors. Of course, there is a caveat. A patent may find a place in an existing portfolio. Owners of large portfolios, like IBM, Samsung and Microsoft may be looking to close a few gaps in a patent thicket. But whether a patent fills that gap is a function of luck and getting in front of the right decision-maker. A patent that is aligned with a successful product can be enormously powerful. For example, a few years ago I was approached by a client on the receiving end of a lawsuit. The patent owner threatened legal proceedings and followed up with the application. The patent in suit was poorly drafted and whether it actually covered the alleged infringing product was questionable. But once proceedings are la

The Demise of the Innovation Patent

The innovation patent has finally received an execution date of 25 August 2021. IP Australia will no longer permit the filing of new innovation patent applications from 26 August 2021. Existing innovation patents with a filing date on or before 25 August 2021 will continue in force until they expire. A divisional application for an innovation patent can be filed after 25 August 2021 if the parent application was filed on or before 25 August 2021. Likewise, a standard patent application with a filing date on or before 25 August 2021 can be converted to an innovation patent application after 25 August 2021. That will be a sad day. This is a misguided piece of legislation. Read more here .