While we’re on the subject of raising patent standards, the Commissioner has also introduced new rules for divisional applications.
Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.
Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.
All very quaint and so 19th century, but fatal!
The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.
Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.
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?
Is the question that will be addressed at a 3 hour forum in Melbourne on 25 May 2010, organised by IP Australia.
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.
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 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.
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
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 has released two more discussion papers of reform proposals:
Flexible Search and Examination (patents)
- 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.
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’.
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.