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At an IP Academics’ conference in early February, I remember Professor Di Nicol asking, rhetorically, ‘where has all the patent reform gone?’. Di pointed out that we’d had any number of ACIP Reports, ALRC Reports (like that on Gene Patenting), and IP Australia Discussion Papers, all with no actual legislation resulting.

No more, it seems.

No doubt many are already aware of the Intellectual Property Laws Amendment (Raising the Bar) Bill. An exposure draft for this Bill was released by IP Australia was released on 3 March, with comments due by Monday next week (4 April). The provisions of the Bill have been discussed at some length elsewhere, too, including some very interesting, thorough discussion of Schedule 1 on the Patentology blog.

I have a few thoughts though, on things that haven’t been discussed much. (more…)

IP Australia has released the IP Laws Amendment (Raising the Bar) Bill for public consultation. It’s huge: it covers patentability standards, a patent research exception; enforcement; oppositions – you name it, it’s in there. Written submissions due by 14 April 2011. More thoughts to come…

I was interested, the other day, to see this Online Opinion article by Nick Gruen (Club Troppo) on Australia’s pharmaceutical industry and the idea of manufacturing generics for export. The basic point of in Nick’s post is that investment in the manufacture of generic biologics in Australia is being prevented by Australian patent law and provisions introduced by the AUSFTA (or, at least, government’s interpretation of those provisions). In summary:

1. Australia extends the term of patents for pharmaceuticals to compensate drug companies for delays in the marketing approval process;
2. Patents last longer in Australia than elsewhere – at least partly because pharma companies apply for marketing approval later here than elsewhere, which means marketing approval is granted later, which means the drugs come off patent later.
3. You can’t manufacture for export during the (extended) patent term, even for export (ie even where the drugs won’t be sold in Australia, and even if they’ll only be sold where the drug is off patent);
4. By the time the drugs are off-patent in Australia, generic manufacturing based elsewhere in the world has garnered post-patent market share in many countries, putting a company that manufactures in Australia too far behind the eight-ball;
5. Result: generics manufacture not possible in Australia meaning that high tech industry not possible here – even though result is only that the manufacture ends up elsewhere (like India) where there is no patent term extension.

Since I’m on record as saying that actual changes to IP law brought about by the AUSFTA were less dramatic than people said at the time, this warranted investigation. So I’ve investigated.

My view? Looking at the literal terms of AUSFTA, it looks like there are reasonably supportable ways through for Australia. AUSFTA is constraining (more constraining than TRIPS is), and that is a problem. But there’s always some room for interpretation. Which makes me wonder. Is this another potential case of Australia being the overly-conscientious ‘stick to full letter and spirit of the treaty law’, ‘don’t rock the boat’ goody two-shoes, adopting a conservative interpretation of treaty language that prevents it taking full advantage of the flexibilities available? More over the fold. (more…)

SMH has the story here.

“Senator Kim Carr, Minister for Innovation, Industry, Science and Research, today called for written submissions on proposed reforms to Australia’s intellectual property (IP) system.

A strong and efficient IP system is a cornerstone of successful innovation.

The proposed reforms are designed to help Australian innovators take their inventions to a global marketplace and encourage foreign investors to bring their new technology to Australia.

This means growth both for our economy and our skilled workforce.

The call for submissions provides a valuable opportunity for interested parties to contribute to the Government’s work in strengthening Australia’s innovation sector and boosting the nation’s economic prosperity.

The multifaceted reforms aim to reduce barriers in the innovation landscape for researchers and inventors, allow patent claims to be resolved faster and strengthen penalties for counterfeiting and other serious forms of trade mark infringement.

The Australian Government is committed to working with business and professionals to get the balance right so the IP system can better serve innovation in Australia.”

Media Release here.
Discussion/Reform Papers on IP Australia Website here.

Submissions due by 8 May 2009.

According to the Exec Summaries of the two papers, the proposed reforms aim to improve the balance in the patent system by:

1. raising the thresholds set for grant of a patent in Australia and better aligning Australia’s key
   patentability standards with standards in countries which are our major trading partners; and
2. improving the scope and stringency of examination to reduce inconsistencies and give
   greater certainty in the validity of granted patents.
3. introducing a statutory exemption covering certain experimental activities

Let the fun begin!

I could never work out why the US Free Trade Agreements included a provision on patent term extension for ‘unreasonable delays’ in the patent office (see, eg, Australia-US Free Trade Agreement Art 17.9.8). I figured there must be delays in some of the developing world countries they negotiate with.

Now I understand why – according to Patently-O, ‘the vast majority of issued patents have an extended patent term due to Patent Office delay’ – at least in his sample of patents issued in March 2008.

PS – note that the Australia-US FTA provision isn’t actually representative. Most of the FTAs require extension in the case of delay in relation to a single patent. Ours only kicks in if there is a pattern of unreasonable delays.

Some colleagues of mine (Paul H. Jensen, Alfons Palangkaraya and Elizabeth Webster), from the Melbourne Institute of Applied Economic and Social Research, have published a new Working Paper that would be of interest to people who, like me, are fascinated by international dynamics in patenting. The paper is called ‘Application pendency times and outcomes across four patent offices‘.

OK, so it’s not the most exciting title in the world. But here’s the thing. They’ve got matched patents applied for in Europe, the US, Japan and Australia, and worked out differences – in outcomes, and how long it takes to get a patent – for the same invention. They’re measuring differences in approach between the different patent offices! How many people do you know who can do that? Here’s an extract from the introduction: (more…)

I’ve become more interested in copyright bureaucracies, and patent and trade mark offices: how they operate; how transparent they are; who they are; how powers are divided between them; how they interact; how they characterise their role, their ‘customers’, and their ‘stakeholders’. How we make them accountable for the decisions they make – or how we fail to do so. Regular readers may have noticed this flavour seeping into some of my more recent posts and papers.

Today, my little obsession is the growth of cooperation between Patent Offices around the world. While there’s long been cooperation (Trilateral Cooperation, for example, between the US, Japan and Europe was set up as early as 1983) I’ve been detecting an increase in the number of press releases in this area, and the number of mooted pilots and activities. So, being the obsessive that I am, I thought I’d collect together what’s been going on – at least as published, that I can find – and offer a few thoughts and questions that these developments raise. (more…)

Australia’s Patent Office, known as IP Australia, has launched its “Strategic Statement” for the period 2007-2012. Like all these things, it’s a bit boring and all motherhood-statement-y – as, indeed, one would expect.

But a couple of things about the Strategic Statement are notable. In particular, it explicitly states its ‘vision’: basically, it sees itself as a branch office, competing for business and trying to make its services more attractive to ‘customers’. But that raises some really interesting issues. Just think about the kind of business IP Australia is ‘competing’ in. On one view, it’s ‘competing’ in the business of granting monopolies. Can anyone see a problem? (more…)

Just prior to the last election campaign, there was a big debate about patent evergreening, in which IP academics and patent lawyers around the country nearly had heart attacks as Opposition leader Latham and PM Howard debated the finer points of patent law in the heated atmosphere of Parliament. Too much excitement!

Part of the debate was about whether provisions in AUSFTA, requiring linking of marketing approval mechanisms for drugs (ie, the Therapeutic Goods Administration processes) and patents would cause or contribute to or enable ‘evergreening’. Latham coined the immortal phrasing ‘bodgy patents’ to explain this.

Well, I know this is all water under the bridge now. But I think it’s worth point out that now that the US has a democrat-dominated Congress, there are some changes happening in trade policy. Specifically, for the agreements still awaiting Congressional approval (Peru, Colombia, Panama, Korea), there’s been an agreement reached between USTR and the Democrats in Congress to change the FTA text – specifically, to introduce more flexibility in the patent provisions (as well as some labor/environmental stuff).

You mean all that angst was for nothing? (more…)

Well, the final report of the Gowers Review of Intellectual Property has been released. The 140+ page report can be downloaded from here.

This is a big deal for the UK – a wholesale review of the efficiency and effectiveness of the whole UK IP system – albeit it has been easy to ignore the goings on, while we struggle locally with what is now, officially, the Australian Copyright Amendment Act 2006 (Cth). Below, a brief background, some links to the UK commentary, and some thoughts on how the recommendations stack up against/compare to what we’ve seen in the just-completed round of Australian copyright and other IP amendments. (more…)

Then you should read this beautifully-written recap on the oral arguments in the US Supreme Court in the KSR case – an important US case on obviousness. And if you’re interested in more, I recommend The Fire of Genius, and Patently-O.

Released this month: Oxfam’s Report on the Implementation of the Doha Declaration. The Doha Declaration was meant to make things easier for developing countries suffering from health crises and requiring access to patented medicines.

Oxfam’s report is, in a word, damning. This from the summary: (more…)

I really did think that people must be joking when they talked about patents for tax limitation strategies. Really. Just on the face of it, the idea that the state might grant a monopoly on a particularly creative way of avoiding paying tax – ie avoiding providing the state’s revenue – just struck me as so ludicrous as to be funny. That’s why I expressed disbelief about the Grant case, and wasn’t surprised by its outcome here in Australia. Such things = not patentable, and that seemed right.

Even yesterday, when I saw in the online news that this was an issue in the US, I was a little disbelieving that this could be a serious issue.

I admit it. I was just plain wrong on that. Take a look at this long, serious document, entitled Background and Issues Relating to the Patenting of Tax Advice, prepared by the Staff of the Joint Committee of Taxation, for the Subcommittee on Select Revenue Measures, part of the House Committee on Ways and Means, for a hearing in July 2006.

Beggars belief. Really. May we never reach that stage here.

Regular readers may recall I’ve blogged about the Grant case – a Federal Court case concerning the Patent Office’s refusal of an innovation patent for a method of structuring trusts etc so as to minimise tax. In general, when I’ve told people about this case, the reaction has been – what, someone tried to patent something like that? And it’s going to court even?

And yet, look at this Friday post from Public Knowledge. Apparently, in the US, the newest practice in the patent field is the patenting of tax strategies, or advice on how to avoid paying taxes: that is, individuals and corporations are patenting tax strategies as “business methods.”

In Australia, these things are not patentable. (more…)