Fee surcharge for more than 20 claims

Patent Baristas look at rule changes introduced by IP Australia to stop patent applicants  circumventing the $100 surcharge for each claim in a patent in excess of 20 claims.

Read on here with links to IP Australia’s announcement.

Apparently, IP Australia plans that the new arrangements come into force on 1 August 2010. Wonder whether the CoreEconomy guys will be publishing articles about distorting the market for excessive claiming? Still, is it just me, or do Australian applications seem to have more claims in them than the US counterparts?

Does the international intellectual property system help or hinder exporters?

Is the question that will be addressed at a 3 hour forum in Melbourne on 25 May 2010, organised by IP Australia.

Three speakers:

Amy Roy, General Counsel of Boost Juice.
Amy will discuss the Boost Juice experience in regards to exporting and protecting their IP overseas. She will also discuss what can be improved from a business perspective to make the IP system easier for exporters to use.

Karen Sinclair, President of the Licensing Executives Society of Australia and New Zealand.
Karen will discuss how the IP system affects the role of an attorney, what works well, what does not work well and the future outlook.

Victor Portelli, General Manager of Patents and Plant Breeder’s Rights at IP Australia.
Victor will discuss the current international IP systems in place, trends in the international environment and possible future developments.

Registration is free and includes lunch.

Details and rsvp here.

Peer to patent Down Under

The pilot project being run be QUT, with support from New York University Law School and IP Australia is nearing the end of its first phase: there are a number of applications open for review until 9 March 2010.

According to IP Australia

The pilot has made a successful start, following its launch in December 2009. The community of reviewers has identified 27 prior art references and contributed 57 comments in the first eight weeks of operation.

A second round of applications will be posted on the website at the conclusion of the first phase and IP Australia is now calling for nominations for potential candidates for review.

For more details and to register as a commenter, click here.

IP Australia more 2nd round consultations

IP Australia has issued a second consultation paper – with draft drafting instructions:

  • Flexible Search and Examination
  • Streamlining the Patent Process

As with the first round of the second round, comments are required by 12 Feb 2010.

The new paper and drafting instructions can be found here (pdf).

Links to all the papers, pdf and word, via here.

2nd round consultations on IP reform in Australia

IP Australia has published a second round of consultation paper (pdf) on its proposals for reform of intellectual property laws and procedures in Australia.

Topics covered include:

  • Getting the Balance Right
    Exemptions to Patent Infringement
    Resolving patent opposition proceedings faster
    Resolving trade mark opposition proceedings faster
    Resolving divisional applications faster
  • Getting the Balance Right
  • Exemptions to Patent Infringement
  • Resolving patent opposition proceedings faster
  • Resolving trade mark opposition proceedings faster
  • Resolving divisional applications faster

Submissions are due by 12 February 2010.

In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.

(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)

Some further papers will be published soon on:

  • Flexible Search and Examination
  • Streamlining the Patent Process

IP Australia issues more reform discussion papers

IP Australia has released two more discussion papers of reform proposals:

  1. Flexible search and

    Flexible Search and Examination (patents)

  2. Streamlining the patent process

The Streamlining paper has some ambitious goals:

  • Removing unnecessary differences in law between Australia and overseas jurisdictions. This would help reduce the cost to applicants of re-drafting claims to meet the various requirements of each jurisdiction. It would also reduce the potential for errors to occur as a result of the applicant being unaware of such differences.
  • Simplifying and modernising systems for processing patent applications. These include processes associated with amending details relating to patent applications, processing Patent Cooperation Treaty2 (PCT) applications entering the ‘national phase’, and accessing or restricting access to information relating to a patent.
  • Remedying other procedural problems within the patent system..

In relation to ‘harmonising’, proposals include:

Interpretation of the prior art—For the purposes of determining novelty, citations are to be construed at the priority date of the claims under examination rather than the date of publication of the citation.

Whole of contents citation—For the purposes of determining novelty, only the information in the citation at its filing date is to be taken into account.

A claimed product will no longer be patentable merely because it is produced by a patentable process or method.

If the product per se in a product-by-process claim is unpatentable in light of the prior art base, the claim to the product will be unpatentable even though the disclosed product was made by a patentable process.

The claims shall not, except where necessary, rely on reference to the description or drawings.

When an application includes an omnibus claim, an examiner is likely to object to the claim unless it is apparent from the face of the specification that it is necessary for the claim to refer to the description or drawings in order to define the invention.

On flexible examination, proposals include:

  • An early search and opinion would provide an early indication of the validity of a patent (section 3.1). This would also provide the public and business with earlier certainty as to where they have freedom to operate.
  • The introduction of various levels of examination. This would ensure that the fee charged to applicants for examination of a patent application would reflect the extent to which the examination relies on work done by other offices (section 3.2).
  • An option for third parties to request examination of an application. This would provide third parties with an opportunity to obtain an earlier determination of a patent application that potentially impacts on their commercial interests (section 3.3).
  • “adjustment” of “some” examination timeframes

Get your submissions in by 16 October 2009.

Download the papers (pdf) or (doc) here.

Patent and Trade Mark procedures in the Office

IP Australia has released 3 further consultation papers on “IP Rights Reforms”:

  • resolving divisional applications faster
  • resolving patent oppositions faster
  • resolving trade mark oppositions faster

Submissions are sought by 17 August 2009.

Download the papers (pdf or .doc) from here.

There are also links to the earlier papers on ‘Getting the Balance Right’ and ‘Exemptions to Patent Infringement’.

Philip Noonan live interview

From Peter Ollie at Managing IP:

Managing IP magazine’s Asia editor Peter Ollier will be conducting a live online interview with IP Australia director general Philip Noonan on Friday March 6 at 4pm Australian Eastern Standard Time.

The one-hour interview will cover topics such as the recommendations in Terry Cutler’s venturousaustralia report, innovative step and inventive step in Australia’s patent law, the controversial Anti Counterfeiting Trade Agreement and the impact of the credit crunch on patent and trade mark applications in Australia.

Registration for this event is free. To register please go to www.managingip.com/webseminars. Registered participants will also be able to submit questions.  

IP Professionals Forum

IP Austraia is seeking applications from registered patent attorneys and/or trade mark attorneys for appointment to its IP Professionals Forum.

According to the blurb, the IP Professionals Forum:

The IP Professionals Forum is the principal forum for consultation, discussion and information exchange on IP matters that relate to IP professionals.

Meetings will allow for high-level discussion on IP policy, IP management, innovation and the broader IP environment, both in Australia and abroad. Participants will also be notified of IP Australia’s initiatives and consulted on future activities.

The forum meets biannually.  The appointment will be for a term of 2 to 3 years. You have to be prepared to fund your own travel – to Canberra, Melbourne or Sydney depending on where the meeting is.

Oh yes, you will be ineligible if you are already represented by an IP professional association including IPTA, LESANZ, LCA and FICPI.  Does that leave anyone left?

More details via here.