3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here, and the second article on patent expiries can be found here.

This third, and final, instalment takes a closer look at how to read kind codes.

Kind Codes

If you’ve ever looked at a patent specification you’ve seen a kind code.  They are the As, Bs and Cs, usually with a number, tacked on to the end of a patent number.

Kind codes have meaning.  They tell you what significant events have occurred in the lifecycle of a patent.  Those significant events range from being filed to grant to amendment, and can also tell you what type of application you are looking at.  In Part 2 of this series on patent expiries, we considered the shorter patent terms for utility model applications.  Kind codes will tell you if you have one.

In Australia, there are kind codes starting with A, B and C.  Standard applications such as convention completes or national phase entries get the kind code A1 with their first publication, and B1 when they are granted.  If they are amended post-grant, they get the kind code C1.  Corrections to bibliographic data get A8/B8/C8 kind codes when the corrected specification is published.

The utility model/innovation patent applications get A4 or B4, and even C4 if corrected during its short lifespan.

The United States has a set of similar looking kind codes but they don’t mean exactly the same things.  Published applications get A1, or A9 if corrected, but the granted patents get B1 if there was no A1 published (first published on 15 March 2001), and B2 if there is an A1 published.

Other United States kind codes include a C for a re-examined patent, and E for a re-issued patent.

Patent Cooperation Treaty, or PCT, applications don’t get granted so we generally just see a range of “A” kind codes.  There is A1 when the specification is published with a search report, A2 when it isn’t, and A3 when they do eventually publish the search report.

Other letters used often in kind codes are U or Y for utility model patents, and T for translations of foreign language specifications.  Sometimes, in the spirit of the Zeroth Law of Thermodynamics, where an extra, more fundamental law was determined after the other three laws, provisional applications are given an A0 kind code, because they are the initial application upon which the rest of the patent family arises.

Each country has its own set of kind codes, some with just a couple to indicate filing and grant, and many more with an extensive array, especially where they have utility model applications and working in a number of languages.  There are many lists available online, some for specific countries if that’s all you need, but this list from Clarivate is a nice summary of kind codes around the world.

To tie this series together, while you’re searching, you can use kind codes on the fly to see where a patent is up to, the patent expiry date to see if it could be alive, and the status to determine if it is truly dead or alive.

Authored by Frazer McLennan and Gareth Dixon, PhD

5 min read

Double patenting has been seen as a significant issue in New Zealand patent law ever since the introduction of the Patents Act 2013 – and with it, the removal of any discretion on the part of an examiner.  A recent decision of the Intellectual Property Office of New Zealand (IPONZ) confirms what we had expected all along: double patenting is to be interpreted strictly, but as a matter considered during examination/pendency, it should generally be curable.

The divisional, the parent, the decision

New Zealand patent application 739526, in the name of Oracle International Corporation, was the subject of recent IPONZ decision [2021] NZIPOPAT 5 (9 June 2021). The ‘521 application is a divisional of granted New Zealand patent 705138.  The pending claims of NZ’526 stood rejected under Reg.82(b) of the Patents Regulations 2014 for claiming “substantially the same matter as accepted in the parent application”.  The rejection was made for the first time in the 4th examination report, and following receipt of the 5th examination report in which the examiner’s position was maintained, the Applicant requested to be heard.  Outside of regular examination, this decision is IPONZ’ first look at the application of Reg.82.

The legislation says “must not”

Reg.82(b) provides that “in the case of a divisional application, if the Commissioner has accepted the complete specification relating to a parent application, that the divisional application must not include a claim or claims for substantially the same matter as accepted in the parent application”.  In contrast to the equivalent provision (Reg.23(2)) of the abolished Patents Regulations 1954, Reg.82(b) does not allow for the exercise of any discretion on the part of an examiner, meaning that “substantially the same subject matter” must be considered objectively and “must not” need be applied.

The claims suggest “probably not”

Granted parent NZ’138 comprises two independent claims 1 (to “an optical tape drive system”) and 11 (to “a method for writing data to an optical tape with an optical tape drive system having n total optical pickup units each having a same fixed unit data rate”).  Pending divisional NZ’526 comprises independent claims 1 and 16, having the same respective preambles.  Beyond that, as drawn out in the decision and discussed below, the parent and divisional claims were similar enough on their face to warrant close scrutiny.    

The Delegate says “definitely not”

In his analysis, the Delegate considered whether a system infringing claim 1 of NZ’138 would also infringe claim 1 of NZ’526 (if granted) – and concluded “yes”.  He then did the same in reverse and reached the same conclusion.  He performed the same analysis on the respective method claims 11 and 16 – again concluding “yes” and “yes”. 

The decision helpfully breaks down each claim into its respective integers and transposes them side-by-side in order to highlight the differences (or rather, similarities), presumably inviting the reader to reach their own conclusions.  That said, as a couple of chemists, we’re more than happy to abide with the Delegate’s analysis: Claims 1 and 16 of NZ’526 fall foul of Reg.82(b) insofar as they claim “substantially the same subject matter” as the respective claims 1 and 11 of NZ’138.

At paragraphs 39-41 of the decision, the Delegate provided some general comments.  Firstly, as suggested in the “must not” wording of Reg.82(b), there is no discretion on the part of the Commissioner.  Secondly – and logically – a claim substantially identical in phrasing and terminology to an accepted claim falls foul of the regulation.  And thirdly, where the phrasing, terminology or order of claims is different, they must still be rejected under Reg.82(b) if a skilled person would construe them to be of substantially the same scope.

Unsurprisingly, the decision upheld the examiner’s finding.  The Applicant was afforded a short extension of time within which to address the rejection.  Following rather extensive amendments to claims 1 and 16, the case was subsequently allowed and was published on 25 June 2021 – less than three weeks after the rejection decision.  All’s well that ends well.

We say “there’s nothing to see here”

Double patenting and New Zealand actually have a quite awkward recent history.  When the Patents Regulations 2014 were first published, Reg.52(3) was drafted in a way that suggested (in an extreme and somewhat paranoid interpretation) that a divisional filed with “a claim or claims for substantially the same subject matter as claimed in the parent application” would be dead on arrival as it was not received by IPONZ in the “proper form” (Reg.19).  This was corrected fairly swiftly, to IPONZ’ significant credit – and double patenting was confirmed as an acceptance issue.

Fast forward to the current decision and despite a little bit of a buzz around the traps, we don’t see the problem with it.  There was an obvious policy decision made in enacting Reg.82, which removed an examiner’s discretion – and so what’s an examiner supposed to do when confronted with not one, but two claims that were essentially doppelgangers (at least to these untrained eyes)?  The bottom line is that the Applicant was afforded an opportunity to amend around the rejection, did so, and obtained an allowance.  Surely that’s a win-win.

As one final point – and this is a question I’m asked fairly regularly by foreign (particularly US) clients, double patenting is not a ground for opposition or revocation under New Zealand patent law.  If the examiner misses it, makes a mistake and allows a divisional claiming substantially the same subject matter, then the Applicant chalks up a small “win” – both patents stand (subject to third party challenges on actual grounds of opposition or revocation).  However, because a missed (and clear) double patenting situation ultimately amounts to a black eye on the part of IPONZ, one suspects they’ll remain fairly liberal in their Reg.82(b) rejections.

Double patenting in AU and NZ – mind the gap

Another question often posed is whether there’s any difference to double patenting across the two jurisdictions we service – Australia and New Zealand.  The answer is they’re very similar – but with one significant distinction. 

In Australia, in addition to amendment, a double patenting rejection can be overcome by withdrawing the parent application or surrendering (allowing to lapse) the granted patent.  Strategically, this allows an Applicant to pursue broader (but still overlapping) subject matter in a divisional.  Once the parent is no longer alive, the rejection disappears.

However, in New Zealand, withdrawal or surrender of a parent application or granted patent – at least, as a means of addressing a double patenting rejection, is not possible.  The wording of Reg.82 does not reference the status of the parent, thereby blocking this strategic pathway and making double patenting in New Zealand a slightly more difficult proposition than it is in Australia. 

Authored by Jon Wright, PhD and Gareth Dixon, PhD

4 min read

The abolition of Australia’s second-tier “innovation patent” system has been well publicised and comes with a “magic date” of 25 August 2021.  But what does “abolition” really mean, and what can’t you do come 26 August 2021 that you could do one day prior?  In this article, we break it all down and let you know what you really need to know – so that there are no nasty surprises down the line.

What must I do on or before 25 August 2021?

This is perhaps the most critical (and misunderstood) aspect of the changes.  In order for a new innovation patent to be filed validly, it must come with a filing date of 25 August 2021 or earlier.  Now, for applications already filed in Australia (convention or national phase) or existing PCT international phase applications designating Australia, this is not a problem – your ability to make use of the innovation patent system is maintained (subject to certain caveats, see below).

However, for inventions currently covered by provisional applications (or even awaiting provisional filing), this is where things start to get interesting.  You will need to file “early” (i.e., obtain a filing date of 25 August 2021 or sooner) in order for your invention to remain innovation patent-eligible.  Practically speaking, foreign applicants may struggle to justify bringing their international phase filing forward simply to preserve their rights in Australia’s second-tier patent system.  Rather, they may prefer to file early in Australia (as a standard patent application that can later be converted to an innovation patent, or as a direct-filed innovation patent application), leaving the PCT international phase to run its natural course.

We have attempted to capture this in the graphic below:

What can I still do come 26 August 2021 and after?  

As noted above, for applications already filed in Australia (convention or national phase) or indeed existing PCT international phase applications designating Australia, this is not problem – your ability to make use of the innovation patent system is maintained.  As shown on the timeline below, you can convert an existing standard patent application (i.e., having a filing date of 25 August 2021 or earlier) into an innovation patent, or can have a divisional innovation patent filed from it. That said, one further misconception stems from the fact that this divisional innovation patent can be filed at any time on or after 26 August 2021 (so long as the would-be 8-year term of the divisional innovation patent has not expired).  Whilst this is technically correct, delaying filing does come with consequences in that your ability to claim damages (remembering that one of the principal uses of the innovation patent is as a “litigation weapon”) only dates back to the date of publication of the innovation patent, meaning this is very much a case of “the sooner the better”.

Further reading

Reading about the innovation patent ranks second only to writing about it as a cure for insomnia.  In that respect, we’ve been following things closely over the past few years and have published insights here (Abolition is a bit harsh – rather, why not let the punishment fit the crime), here (The legislation finally passes in Federal Parliament), here (Optimistic and pessimistic views of the innovation patent system), here (Just as Australia moves to abolish the innovation patent, New Zealand considers adding one) and here (Timeline for the phasing out of the innovation patent system).  It looks like someone’s going to have to find something new to write about!

Commentary

The bottom line is that whereas the innovation patent system could have been “fixed” (which may have in turn given it a chance of achieving its stated goal of stimulating R&D amongst local SMEs), the Government had long-since decided its fate.  It was always going to die and attempts to recover it, whilst deserving of a better outcome, ultimately amounted to little more than a fool’s errand.  That we’ve landed where we have is a sad but inevitable consequence of a system that sounded good in theory, but was imperfect in design – and in this respect we need look no further than innovation patent 2001100012, which was “granted” (although later revoked) for a “circular transportation facilitation device” – a wheel.  In many ways, the only surprise is that it’s taken us 20 years to get to where we are now. 

Authored by Shan Sun, PhD and Gareth Dixon, PhD

4 min read

You’ve found a patent of interest but how do you know if it’s dead or alive, and if alive, when it expires, and what exactly do those kind codes indicate?

I’ll explore all these in a three part series of articles, starting with where to find status information and what it means.

Statuses

Some patent offices explicitly report the status of an application, while others make you dig a little deeper, and some make you work hard for that information.  Before we get to who’s who and what’s what, let’s look at what the language around statuses is.

At the most basic level a patent is dead or alive, but within those labels there are a number of ways to describe where in the patent lifecycle they are.  Statuses in both categories are split into pre-grant and post-grant.  Every patent office has its own language around statuses.  Here’s a selection.

Pre-grantPost-grant
AliveAccepted
Filed
Pending
Under examination
Under opposition
Unexamined
Certified
Granted
Issued
No opposition filed
Patented
Registered
Sealed
DeadAbandoned
Converted
Lapsed
Refused
Rejected
Void
Withdrawn
Ceased
Dead
Ended
Expired
Revoked

Although data aggregators such as commercial patent databases often have status data, the recognised place to go for accurate status information is the national register for the patent of interest.  In Australia that’s AusPat, and in New Zealand it’s IPONZ.  Other sources include PAIR (United States), the European Patent Register, KIPRIS (South Korea), J-Plat-Pat (Japan), and thanks to Brexit, Ipsum (United Kingdom) now has more relevance than it used to.  Of course the list of national registers is far too long to mention every one here, but you can find a list at the WIPO Patent Register Portal.

In some national registers all you need to do is search for a patent number (or any search) and the status will be provided as part of the search results or record view, such as AusPat below.

Others in this group include IPONZ, KIPRIS and Ipsum.

National registers in the next group don’t explicitly state the status of a patent, and usually require a single click, or maybe two, from the search results page through to the record view.  For example the search results page for J-Plat-Pat is shown below, and a click on ‘Details’ will take you to the information required.

Others in this group include In-PASS (India), PRV (Sweden) and the Canadian Patents Database.

The last group of national registers make you work harder to find the status of a patent.  I’m looking at the European Patent Register, and giving death stares to the United States’ PAIR in particular, and for different reasons.

First to the European Patent Register.  The initial view is straightforward as shown here.

The status ‘No opposition filed within time limit’ refers to the period after acceptance where an application can be opposed before grant, and in this case that time has expired and the patent has been granted.  Simple isn’t it?  Not quite.  Europe is a group of countries, and a number of these get designated so that the EP patent is applicable in each of them, so your country of interest has to be on that list, as shown below.  To find this list just scroll down the register page for this application.

Are we there yet?  Sorry, no.  We still need to scroll down the page a little further.  The list of designated countries is essentially an ambit claim, hedging that the patent is going to make it big.  They usually don’t so many of the designated states find themselves on the ‘lapsed’ list, shown here in part.

Now you need to conduct a reverse search to see if the country of interest is on the list or not, made all the harder by having the list in date order, not alphabetical order.  If the country of interest is here, the patent is dead, if not, possibly still alive.  At first glance I can see Germany, France, Great Britain and Ireland are still potentially alive.  A trip to their respective registers (Depatis, INPI, Ipsum and IPOI) is necessary to confirm that.

Now to PAIR.  Many national registers will change the status of a patent when a significant event such as ceasing through non-payment of renewal fees, or expiry after the full term of the patent, but the USPTO do not. Take the example shown below where the initial view in PAIR indicates it is a ‘Patented Case’.

The image doesn’t show the application filing date or the earliest effective filing date but it is 3 May 1999 for both.  If you’ve read my previous article on calculating United States patent expiries you’ll know the expiry date is 3 May 2019.  That’s a date in the past so this patent has expired, but PAIR does not say so.  You have to do all the work here.

There’s always the possibility of a patent term adjustment of more than two years, but with an issue date just over three years after filing, that’s unlikely, so you can assume it is well and truly dead.

This example is for a patent around the end of its expected life, but for others, in addition to calculating the expected expiry date, you may need to check the patent maintenance fees to see if they are up to date.  You can access that information through PAIR.

That’s a brief rundown on statuses, where to go to find them, and what language is used to describe them.  I touched briefly on patent expiry dates for the United States.  In Part 2 I’ll look at patent expiries in other parts of the world.

Authored by Frazer McLennan and Gareth Dixon

WIPO’s annual “World IP Day” is 26 April 2021.  This year’s theme is “IP & SMEs: Taking your ideas to market”.  Now, in most developed countries, one could develop a compelling narrative around this.  But it’s slightly more complicated here in Australia, because the two don’t mesh quite as they should.  By this, I mean that it’s SMEs that had a whole second tier patent system developed around them (Australia’s “innovation patent”), it’s SMEs that (allegedly) failed to make use of the system, and that it’s (apparently) SMEs that are responsible for its abolition later this year.  However, a quick peek under the bonnet suggests that much of this is political rhetoric and that despite the Government clearly thinking otherwise, SMEs are as IP-dependent here in Australia as they are anywhere in the world.   

Innovation patents 101

From its introduction in 2001, the “innovation patent” has been held up as a symbol of the Australian Government’s commitment to encouraging innovation amongst Australian SMEs. 

The innovation patent is Australia’s second-tier patent system.  Novelty, written description and industrial applicability criteria are the same as for the first-tier “standard” patent system.  However, in exchange for offering the public only an “innovative step” (a pseudo-novelty test requiring differences amounting to a “substantial contribution to the working of the invention”), a patentee is afforded only an 8-year term as opposed to the standard 20 years.

Proponents of the innovation patent system note that not all inventions are of the “Eureka” quantum leap variety befitting a standard patent.  Rather, many are iterative – making slow but steady advances on what came before it.  Others are in short lifecycle technologies such as televisions, smartphones and the like.  The argument is that such iterative advances may be “obvious” for the purposes of a standard patent, but still invite substantial RD&E expenditure on a patentee’s part – and so why shouldn’t the patentee be compensated with some measure of monopoly right?  To my mind, this seems fair – a patent system designed around Australia’s iconic “backyard” or “garage” inventors.

Innovation patents are “granted” shortly upon filing (a potential problem in itself), but are not enforceable at law until such time as they have been “certified” (i.e., examined).  However, once certified, the enforcement remedies available to a patentee are the same as those for a standard patent.  For this reason, innovation patents – particularly innovation patents divided out from standard patent parents, can be effective “litigation weapons” because the low innovative step threshold makes them somewhat difficult to revoke in a counter-claim for invalidity (and suing against a divisional innovation patent will not expose the parent standard patent to a revocation cross-claim).  Thus, innovation patents provide a legitimate strategic tool for those looking to enforce their Australian patent rights.   

The innovation patent system is “dead man walking”

Following a lengthy review, the Australian Government has opted to phase out the innovation patent system from 26 August 2021.  The transitional provisions are summarised below, but there are three principal dates of which applicants should be aware:

  • The legislation was passed into law (i.e., received the required Royal Assent) on 26 February 2020.  For the purposes of filing new innovation patents, the legislation takes effect from 26 August 2021, which is 18 months from the date of Royal Assent.
  • At any time prior to 26 August 2021, new innovation patent applications can be filed.  In other words, nothing changes until the legislation takes effect.
  • As of 26 August 2021, no new innovation patent applications can be validly granted.  However, an existing and pending standard patent application (i.e., having a filing date prior to 26 August 2021) can still be converted into an innovation patent, or can have a divisional innovation patent filed from it. 

Why is the innovation patent being phased out?

The perceived “problem” with the innovation patent was three-fold. 

  • Firstly, there has been a perception that the threshold test for innovative step (essentially a pseudo-novelty test, as noted above) was too low and that this, in turn, may give rise to a proliferation of difficult-to-revoke certified innovation patents that were enforceable at law.  However, this could be easily remedied by raising the threshold for an innovative step.  That’s strictly outside the scope of this article, so we might leave it for another day.    
  • Secondly, that the “granted upon filing” status rendered the system susceptible to abuses such as foreign applicants potentially being able to claim Government subsidies in their country of origin for obtaining a “granted” patent.  Again, this has little to do with SMEs, but surely, seeing as pending standard patents have the status of “filed”, perhaps non-certified innovation patents could be “pending”, “pre-certification”, awaiting examination”, etc., – in short, anything other than the present misrepresentation of “granted”.
  • Thirdly – and most significantly in respect of this article – there had been a perception that local SMEs were not making use of the innovation patent system (and even if they were, they were not deriving tangible benefits from it). 

Ultimately, it is the third perceived problem that has been considered terminal, and this is the reason why IP and SMEs are somewhat strange bedfellows in Australia at present.

Local SMEs were (allegedly) not making use of the system… 

This appears to be the primary justification for abolishing the innovation patent system.  A 2014 review conducted by ACIP (the Advisory Council on Intellectual Property) had recommended – somewhat surprisingly at the time, that the innovation patent system be abolished.  Following a protracted review process stretching back to 2011, ACIP eventually concluded by way of economic modelling that the innovation patent system was not meeting its stated objectives.  Such objectives, of course, were to stimulate innovation in Australian SMEs by providing easier, quicker and cheaper patent rights as well as an avenue to protect their lower level inventions. 

Objectively, it appears that the data presented in the economic report may have been open to a number of interpretations, and that disproportionate weight may have been attributed to certain factors.  For example, the fact that there are a relatively high proportion of self-filed innovation patent applications cloud the data relating to the calculated total regulatory cost of the system and the assessment of commercial success of innovation patent filing entities.  This obviously has an effect on the concluded net economic impact, which appears to have been a major factor influencing the stand taken by ACIP.  Notwithstanding, the Productivity Commission and the Australian Government have subsequently backed this position, which effectively meant the writing was on the wall for the innovation patent system.

…which meant that the innovation patent system was not meeting its stated objectives

In recommending the innovation patent system be abolished (and then acting on its own recommendation), the Government merely assumed the position of both the Productivity Commission and ACIP before it.  Both had opined that the innovation patent system (as it stood) was unlikely to provide net benefits to the Australian community or to the SMEs who are the intended beneficiaries of the system.  The Productivity Commission found that the majority of SMEs who use the innovation patent system do not obtain value from it and that the system imposes significant costs on third parties looking to navigate around thickets of low-level patents. 

The Government noted that the innovation patent system was established with the express objective of stimulating innovation amongst Australian SMEs.  Rather than “fix” the innovation patent system, the Government was of the opinion that more targeted assistance may better assist SMEs, while avoiding the broader costs imposed by the innovation patent system. 

So, what’s the Government doing to support SMEs protect their IP?

Along with initiatives to support SMEs introduced through the National Innovation and Science Agenda (NISA) and existing programs such as the R&D Tax incentive, the Government noted that it had already implemented a number of measures to support SMEs such as the IP Toolkit for Collaboration, Source IP, the Patent Analytics Hub and grants and advisory services for businesses in certain industry sectors looking to leverage their IP.  Moreover, IP Australia has established an IP Counsellor to China, is trialling patent analytics services and is raising education and awareness of IP issues with local start-ups.

More recently, IP Australia has introduced its Portal for small and medium enterprises (SMEs), which comprises sections aimed at helping SMEs navigate the maze that is IP. 

What are we doing to assist SMEs?

Your innovation patent can still be filed up until 26 August 2021 and will run for the full eight-year term.  Any SMEs thinking this path might be right for them should get in touch with their patent attorney as soon as possible.

Alternatively, or in combination with the Government resources mentioned above, many patent attorneys (such as us) are happy to point SMEs in the right direction, at no cost and with no obligation – after all, Mr Gates, Mr Musk and their mates all had to start somewhere…

Happy World IP Day, everyone.

2 min read

IP Australia has been providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  However, streamlined extensions will not be available after 31 March 2021.

Streamlined extensions (until 31 March 2021)

The streamlined process has been available at IP Australia for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  Many deadlines for patents, trade marks and designs have been covered by the streamlined extensions of time.

No declaratory evidence or fee has been required; it has been possible to simply check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

Requesting extensions of time at IP Australia for patents, trade marks and designs from 1 April 2021

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time.  However, from 1 April 2021, a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  For patents, such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made from 1 April 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here: https://shelstonip.com/insights/publications/missed-an-australian-patent-deadline-heres-what-to-do/.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

3 min read

IP Australia is providing free, streamlined extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

The period for requesting a streamlined extension has been extended until 31 March 2021.  However, IP Australia now indicates that, subject to any further developments in the COVID-19 pandemic, streamlined extensions will not be available after 31 March 2021.

What are the streamlined extensions?

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, the streamlined extensions are not a simple free-for-all (see our earlier article here).  If asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.

Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

What if I want to request an extension of time after 31 March 2021?

If you are unable to meet a deadline due to the COVID-19 pandemic, it will still be possible to request an extension of time after 31 March 2021.  However, such an extension will not be available via the streamlined process and a declaration will be required to explain why you cannot meet the deadline.

The grant of an extension of time due to the effects of the pandemic does involve an element of discretion.  Such extensions fall under section 223(2)(b) of the Patents Act 1990, according to which an extension of time “may” be provided if a deadline is missed because of “circumstances beyond the control of the person concerned”. 

Requests for extensions of time due to COVID-19 made after 31 March 2021 will be considered on a case-by-case basis and the Commissioner’s/Registrar’s review will consider the impacts of the pandemic.  

We can help

For more information about extensions of time in Australia, see our earlier article here.

If you require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

2 min read

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 28 February 2021.  Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further. 

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, these COVID-19 extension provisions are not a simple free-for-all (see our earlier article here: https://shelstonip.com/insights/briefings/ip-australias-covid-19-extensions-of-time-a-word-of-caution/).  An element of discretion does apply and, if asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  The timing of the request can be of significance too.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.

Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

7 min read

Defence export controls (limitations on exporting “sensitive” Australian technologies) and intellectual property (especially patents) have been linked for the best part of a decade.  A 2018 review predicated on strengthening the restrictions appeared to go nowhere – that is, until an interesting article in this morning’s Guardian hinted that tightening the laws is still very much on the cards.

Local inventors (and indeed, patent attorneys) may think “so what?  Unless I’m looking to patent a weapon, how is this remotely relevant to me?”  Well, if your invention falls into what’s termed the “dual use” category – inventions having potential downstream military application (and it’s the Government that decides this – not you, and not us), then please read on…     

The status quo

The Defence Trade Controls Amendment Act 2015 entered into Australian federal law on 16 May 2015 and amended the original Defence Trade Controls Act 2012 (“the DTC Act”).  The (criminal) sanctions for non-compliance took effect from 2 April 2016.  In regulating the extent to which one can communicate new technologies overseas – and in providing criminal sanctions for non-compliance, the legislation stands to impact significantly upon the day-to-day activities of Australian patent attorneys – and their clients.  On this basis, the fact that defence export controls has raised its head again places this little-known piece of legislation squarely in the public eye and provides an opportunity to issue a reminder as to the scope and significance of the DTC Act.    

Criminal sanctions for non-compliance with the restrictions

The DTC Act regulates the overseas supply and publication of Defence and Strategic Goods List (DSGL) technologies and the brokering of DSGL goods and technology.

Shelston IP actually worked closely with Defence Export Controls (DEC) throughout the 2015 public consultation process, and as a consequence, our internal systems have been fully compliant with the restrictions imposed for the best part of five years.  In short, when dealing with Shelston IP, local clients can rest assured that we fully understand the situation and will have taken the necessary steps to minimise any risks to the parties involved.

Communicating technology – restrictions on our “day jobs”

As patent attorneys, the communication and publication of “technology” is a staple of our everyday work.  Often, such communications are sent offshore.  Other times, we communicate new technologies in the form of patent specifications to our local clients, who in turn, send these documents overseas.  Depending on the nature of the “technology”, the DTC Act stands to criminalise such activities.

Because the offence provisions for supplying and publishing DSGL technology and for brokering DSGL goods and technology took effect from 2 April 2016, individuals and organisations are required to seek permits for any otherwise-offending activities. 

Why have export controls in the first place?

The DTC Act is a little-known document having significant, wide-reaching consequences.  Australia’s export control system aims to stop goods and technologies that can be used in military applications from being transferred to individuals, states or groups of proliferation concern.  As a member of various international export control regimes, Australia is part of a global effort to regulate the export of items of concern, many of which have potential terrorism or weapons of mass destruction applications.

Australia already regulates the physical export of certain military and dual‐use items under Regulation 13E of the Customs (Prohibited Exports) Regulations 1958.  However, the DTC Act is Australia’s means of closing any gaps that have appeared in the interim (as required by the Wassenaar Arrangement, to which Australia is a signatory).

Accordingly, the DTC Act regulates three main activities:

  • The intangible supply (transmission by non‐physical means, such as e-mail) of controlled technology from a person in Australia to a person outside of Australia;
  • Publishing controlled military technology; and
  • Brokering (akin to enabling another to communicate overseas) controlled military goods or technology.

How do I know if my technology is covered under the DTC Act?

The DTC Act applies to different stakeholders, depending on whether their activities involve military or “dual‐use” items listed in the Defence and Strategic Goods List (DSGL).  The DSGL, accessible here, is a 338-page legislative instrument defining as “dual use” a broad range of otherwise fairly benign-sounding technologies.  As such, one could assume (fairly reasonably) that a technology was exempt on the basis that it had no immediate or apparent primary military end use.  However, as noted above, it’s the Government that has the final say by way of the DSGL listing being the sole arbiter.  It is important to note that secondary or incidental military applications may suffice, hence the term “dual use” technologies.

International export control regimes are generally conscious of their impact upon people’s day-to-day activities, and so the controls are designed to only capture what is considered necessary.  For example, the DSGL lists computers that are specifically designed to operate below ‐45 °C or above 85 °C.  The DTC Act controls only apply to the technology which is necessary for the computer to operate at these extreme temperatures.  Technology that does not influence the computer’s ability to function at these temperatures is not controlled.  Using the above example, an Australian inventor who has created such technology for the primary purpose of, say, exploring the surface of Mars, would need to be acutely aware of the restrictions imposed by the DTC Act – as would his/her patent attorneys.

All things in perspective…

As mentioned, the offence provisions specified in the DTC Act came into force from 2 April 2016.  Although the sanctions for non-compliance are criminal in nature, this should be tempered with the knowledge that being hit with the full extent of the sanctions (10 years’ imprisonment) would require prosecutors to prove the requisite levels of intent, knowledge, recklessness and negligence.  The operation of the Criminal Code Act 1995 means that a person who mistakenly supplies, publishes or brokers controlled technology contrary to the DTC Act after diligently following institutional compliance processes would be unlikely to be prosecuted, much less to the full extent of the law.  The Code applies general principles of criminal responsibility to Commonwealth offences; in particular, the knowledge requirement is akin to having received fair warning. 

If the goods or technology at issue are listed in the DSGL, a permit or approval may be required from DECO.  The qualifier “may” is dependent upon:

  • The activity being undertaken (“supply”, “brokering”, or “publication”); and
  • Whether it is a military or a “dual‐use” DSGL technology; and
  • Whether an exemption applies (such as “basic scientific research” or material that has been lawfully placed into the public domain).

As readers will appreciate, a simple “yes/no” answer as to whether a permit is likely to be required is necessarily dependent upon the unique circumstances that each scenario presents.  

Patent-specific exemptions

As mentioned, a staple of our day-to-day activities as patent attorneys is the exchange of information relating to “technology”.  On a daily basis we communicate technology internally, domestically and internationally – and our clients do the same.  It is useful, therefore, to understand the activities that are exempted under the DSGL regulations.

Firstly, the “pre-publication” exemption amounts to recognition, on the Government’s part, that they cannot regulate the publication of information.  As such, the communication of information contained in a patent document that will later be published (e.g., a draft convention application or a draft PCT application) appears to fit comfortably within the definition of “pre-publication”.  On the other hand, provisional patent applications do not appear to fit within this category – and as such, another exemption must be invoked.

To this end, the “patent application exemption” covers activities “directly related to seeking a patent”:

This exemption applies to the supply of DSGL technology where it is done for the purpose of “seeking a patent” in Australia or overseas. “Seeking a patent” includes lodging a patent application and the supply of DSGL technology to a person or organisation (e.g., a Patent Office, patent attorney, research collaborator or a patent review panel) that is directly associated with the lodging (or potential lodging) of a patent application, or as a result of the patent examination process.

Supply for a purpose that is not directly related to seeking a patent will require a permit (unless other exemptions apply). This includes supply of DSGL technology to a research collaborator located overseas before a decision is made to seek a patent. Once a provisional patent application is filed, any supplies of DSGL technology to further develop an invention prior to preparing/submitting a complete patent application will require a permit. Supplies of DSGL technology to locate investors and determine overseas markets (including forwarding a recently-filed provisional application) will require a permit.

The process of publishing a patent (or an unsuccessful application) into the public domain is covered by this exemption. Until such time as that information exists in the public domain, it is still controlled and would require a permit to be supplied if it is not for the purpose of “seeking a patent” and no other exemptions applied.

As such, the Government would appear to have intentionally extricated the acts of overseas communication for the purposes of preparing a patent application (exempt) and communication with a view to ancillary business activities such as seeking investor funding (not exempt).

We will keep abreast of any changes to, or unusual interpretations of this new exemption.  As it is, it is clearly important to the manner in which we – and our clients – go about our everyday professional activities.    

Shelston IP’s proactive approach to the DTC Act restrictions

Being aware of the potential impact of the DTC Act, Shelston IP has closely monitored progress throughout the public consultation process (dating back to 2014).  We have liaised with DEC on a regular basis and have developed an internal best practice guide.  Adherence to such best practice will protect not only our interests, but also those of our clients.  This, in turn, means that clients dealing in controlled or dual-use technologies can be assured that their interests are in safe hands.

Based on our experience and understanding, compliance with the DTC Act can be as easy as following a few simple rules.  In some instances, a deeper consideration of the specific circumstances and legislative requirements will be necessary.  Those concerned about their own internal procedures under the DTC Act are invited to make contact with their Shelston IP patent attorney. 

Our specialist patent searcher, Frazer McLennan, is an expert in assessing technologies against what is prescribed in the DSGL register.

Authored by Gareth Dixon, PhD and Frazer McLennan

2 min read

The World Intellectual Property Organisation (WIPO) have been adding a range of useful tools for many aspects of intellectual property for a while now, including searching databases for patents, trademarks and designs; classifications; statistics; and multilingual terminology across patent documents.  I’ve written before about where you might go to conduct a search, sticking mainly to free sources, but WIPO have just introduced a new tool called WIPO Inspire that is a collection of reports on patent databases and their features.

There are only 24 databases at present but I’m sure that list will grow as new entrants establish themselves in the market.  It’s weighted slightly in favour of fee paying, or commercial, databases, and the free ones are currently restricted to the IP5 (the five largest intellectual property offices), but not either of PatFt or AppFT from the United States, but including WIPO’s own PatentScope, and a few others such as The Lens.  If you need to look further afield, WIPO Inspire has incorporated the older Patent Register Portal page, so you can still locate the relevant national databases for jurisdictions outside the IP5.

The reports on each database are quite extensive, and go into detail regarding the jurisdictions covered, which patent classifications can be used, how their patent families are structured, and how you can manipulate your results through sorting, export or analysis features, plus a lot more.

While it is a short list of databases, and quickly scanned, it is also possible to filter the databases by their features.  For example if you are looking for a database that allows semantic searching, to find those that do involves checking a box within the menu on the left hand side.

WIPO Inspire includes a comparison tool that sits up to four database selections side by side so the features of particular interest can be compared easily.

WIPO Inspire looks like a good tool to help if you are unfamiliar with patent databases, in terms of knowing what their names are, and what they can do.  You may just find one that has the combination of features you’re after.

Authored by Frazer McLennan and Gareth Dixon, PhD