Annual Technical Report 2013 on Patent Information Activities submitted by Australia (CWS/ATR/PI/2013/AU)
Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.
The term "patent" covers utility models and Supplementary Protection Certificates (SPCs). Offices which issue design patents should report their design patent information activities in their Annual Technical Reports on Industrial Design Information Activities.
I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN PATENT INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE
Statistics: changes in terms of application filings and grants with respect to previous year; trends or areas experiencing rapid changes
2012:
Patent applications filed = 26,358
Patents granted = 17,724
PCT designations = N/A*
2013:
Patent applications filed = 29,717
Patents granted = 17,112
PCT designations = N/A*
*(note all states were automatically designated for PCT filings from 1 January 2004)
Overall, applications for patents and trade marks in Australia dipped during the global financial crisis (GFC). Patent filings have since recovered and trade mark and design filings now exceed pre-GFC levels. From 2011 to 2013, we have seen growth in patent and trade mark filings from Australian applicants as well as applicants from the United States of America (US) and Asia. The main driver of the growth in Australian Patent applications in 2013 was due to the IP Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. The reforms introduced by the Act are intended to raise the requirement for receiving a patent, but requests for examination filed before 15 April 2013 will be examined under the old system, meaning they have a lower threshold. This led to a rush of applications and examination requests as applicants aimed to file prior to the reforms taking hold. Please refer to the recently released “Australian Intellectual Property Report 2014” for more detailed discussion and analysis. This report is available on the following link:
http://www.ipaustralia.gov.au/about-us/reports/2014_ip_report/
Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.
http://www.ipaustralia.gov.au/about-us/what-we-do/ip-statistics/
Patents Act:
http://www.comlaw.gov.au/Series/C2004A04014
Patents Regulations
http://www.comlaw.gov.au/Series/F1996B02697
• Intellectual Property Laws Amendment (Raising the Bar) Act 2012
http://www.comlaw.gov.au/Details/C2012A00035
Annual Report
http://www.industry.gov.au/AboutUs/CorporatePublications/AnnualReports/Pages/default.aspx
(Refer part B for information on IP Australia)
Latest news:
Latest news is featured on the home page of IP Australia's website:
http://www.ipaustralia.gov.au/
Subscription-based mailing lists:
http://www.ipaustralia.gov.au/about-us/news-and-media/
II. SERVICES AND ACTIVITIES RELATED TO PATENT INFORMATION CARRIED OUT BY THE OFFICE
Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) – URLs
http://www.ipaustralia.gov.au/get-the-right-ip/eservices/
IP Australia has released a new website. Any links to the previous site will be redirected to the new home page. Please contact IP Australia if you need assistance.
General information
http://www.ipaustralia.gov.au/get-the-right-ip/patents/
Publications and forms
http://www.ipaustralia.gov.au/get-the-right-ip/patents/patent-forms/
AND
http://www.ipaustralia.gov.au/get-the-right-ip/patents/patent-publications/
Examiners Manual
http://www.ipaustralia.gov.au/pdfs/patentsmanual/WebHelp/Patent_Examiners_Manual.htm
IP Australia has released a new website. Any links to the previous site will be redirected to the new home page. Please contact IP Australia if you need assistance.
IP Australia has on-line filing facilities for patent applications which allows all new standard patent applications as well as innovation patent applications to be filed electronically. IP Australia also accepts applications filed in paper form.
Availability of the application dossier in electronic form
http://www.ipaustralia.gov.au/get-the-right-ip/patents/search-for-a-patent/
IP Australia has released a new website. Any links to the previous site will be redirected to the new home page. Please contact IP Australia if you need assistance.
Full specifications of all non-PCT designated AU-A and AU-B patent specifications are available on the website, and are updated on a weekly basis.
Australian patent specifications are made available through Bulk Patent Specification e-data.
Classification1, preclassification2 (if applicable), reclassification3 activities; classification systems used (e.g., International Patent Classification (IPC)); matters concerning indexing of patent information
Patent applications are classified into the latest edition of the International Patent Classification. As of 1 January 2006, IP Australia implemented the use of IPC 8 (reformed).
IP Australia no longer reclassifies Australian designated PCT applications at the open for public inspection stage.
Abstracting, reviewing, and translation of the information contained in patent documents
Examiners redraft applicant prepared abstracts of non-PCT national applications when they are found to be deficient to an extent that they are unable to fulfil their function. The abstracts of PCT national phase applications are not reviewed as these have been thoroughly evaluated in the international phase.
III. SOURCES OF PATENT INFORMATION PROVIDED BY THE OFFICE
Main types of publications of the Office (patent applications, full text, first pages, abstracts, bibliographic data, granted patents, etc.), medium (on paper, on CDs, online – URLs)
The number of patent documents published in 2013 in the Australian Official Journal of Patents (AOJP) was:
* patent applications open to public inspection (AU-A) = 9,879
* patent applications advertised accepted (AU-B) = 18,794
Note:
The AU-A figure includes standard patent, and innovation patents made open to public inspection (OPI) either pre-grant or at grant. [Does not include National Phase Entries.]
The AU-B figure includes standard patent acceptances and innovation patent certifications.
Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online – URL), etc.
Official notices and changes to office procedures are published in the AOJP.
These Official notices, and many other patent related notices (including the manual of practice and procedure), are also put directly on the IP Australia website under the Patent notices section.
Australian patent specifications are made available through Bulk Patent Specification e-data.
The Office continues to receive foreign patent specifications on CD-ROM and DVD. The following databases and information are available through the IP Australia website:
AusPat
This database contains bibliographic and status information about patent applications filed in Australia from January 1979. In some cases, details of patents filed before January 1979 are also available. AusPat also contains International Patent Classification information for the majority applications from 1920; IPC version 8 has been applied to applications filed from 1970.
The supplement to the Australian Official Journal of Patents may be found at:
http://www.ipaustralia.gov.au/about-us/publications/journals/
Information on IP Australia’s Bulk Data Products can be found at:
http://www.ipaustralia.gov.au/about-us/corporate/bulk-data-products/
IP Australia has released a new website. Any links to the previous site will be redirected to the new home page. Please contact IP Australia if you need assistance.
Information products and patent document collections (coverage, medium, etc.) available to examiners, including external collections and databases
Information services are available on the IP Australia website.
http://www.ipaustralia.gov.au/
IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO PATENT INFORMATION CARRIED OUT BY THE OFFICE
Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements
Current standard desktop software includes Microsoft Windows 7 with Microsoft Office 2010. Intelledox software has been deployed to semi-automate report generation.
The Office's publication system provides the following functions:
• production of the AOJP Supplement as a PDF file. The Supplement covers applications from 2002. The journal is published on IP Australia’s website;
• production of patent certificates and original register entries; and
• production of notices for patent applicants or their agents.
Hardware used to supporting business processes of the Office
The other part of the Office's publication system is mainframe based and produces:
• PDF file of the Australian Official Journal of Patents. This covers applications/patents up to 2002;
• patent certificates and original register entries; and
• notices for patent applicants or their agents.
IP Australia’s head Office has an ethernet-based LAN providing high speed bandwidth for each user desktop connection. A DMZ-based, ASD approved firewall using IAN ports (Internet IEFT Assigned Numbers) provides the secure means to allow access from internal systems/users to external entities such as the Internet or public/private organisations.
The current SOE includes Windows 7 with Office 2010 , IE 8.0 , and Microsoft Outlook
Internal databases: coverage, updates, interlinks with external sources
Full specifications of all non-PCT designated AU-A and AU-B patent specifications are available on the website
AusPat
This database contains bibliographic and status information about patent applications filed in Australia from January 1979. In some cases, details of patents filed before January 1979 are also available. AusPat also contains International Patent Classification information for the majority applications from 1920; IPC version 8 has been applied to applications filed from 1970.
Updates to the website information about all non-PCT designated AU-A and AU-B patent specifications occur on a weekly basis.
See Section 2 “Mass storage media and microforms used” for this information.
IP Australia has on-line filing facilities for patent applications which allow all new patent applications, as well as all other patent related requests, to be filed electronically. These on-line filings interface directly to IP Australia's electronic case file management system, PAMS, which allows these applications to be processed electronically. The AusPat search system provides public access to a range of the bibliographic data and text of full specifications held in PAMS
Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file
IP Australia uses commercial search tools EPOQUE, STN and GenomeQuest to search databases such as EPODOC, WPI, full text patent databases and many non-patent literature databases. Additionally, many free patent and non-patent literature databases available in the internet are also searched.
Administrative management electronic systems (register, legal status, statistics, and administrative support)
IP Australia’s Customer Service Call Centre provides a central contact for customers to obtain information about a wide range of Intellectual Property issues. Customers contact the Call Centre via telephone, and online enquiry form with around 95% of matters of a general nature solved at the first point of contact. .
Increasingly, IP Australia is using its website as a means of providing an alternative means of public access to these services. Patents can be searched by external clients via AusPat.
IP Australia is currently implementing a system to support business-to-business data exchange of patents, industrial designs and trade marks transactions with its high volume clients (Patents and Trade Mark Attorneys). This system will be consistent with WIPO electronic filing and National e-commerce standards.
All Australian Patents records/documents are handled in accordance with Office procedures set down under Australian Law and archiving practices.
V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF PATENT INFORMATION
Key promotional activities in 2013:
Wallace and Gromit’s World of Invention exhibition
IP Australia has sponsored the Australian tour of “Wallace and Gromit’s World of Invention”, an exhibition originally developed by the UK Intellectual Property Office, Aardman Animation and the Science Museum in London. Following a successful preliminary season in Melbourne at Scienceworks in 2012 (attracting close to 104,000 visitors), the exhibition was on show at the Powerhouse Museum, Sydney from December 2012 to May 2013 (attracting over 84,042 visitors).
World IP Day
The inaugural Intellectual Property Report 2013 was launched on World IP Day via the IP Australia website. This report, which will be produced annually, presented a comprehensive overview of Australia’s IP system and how we compare globally.
IP Reform
On 15 April 2013, the IP Laws Amendment Act 2012 came into force. The impact of the new legislation was regularly promoted to stakeholders, customers and the public via digital channels including the IP Australia website.
Vocational Education and Training (VET)
IP has been recommended as a core competency in proposed new Leadership and Management qualifications in the Vocational Education and Training sector. A decision by the VET Regulator on the new qualifications is expected in late 2014.
E-Services
Since October 2011 IP Australia has progressively delivered new online services across two channels.
B2B (business-to-business) is a software product IP Australia provides high volume customers to use that enables the direct transmission of large numbers of service requests directly into IP Australia internal systems.
eServices is IP Australia’s web-based self-service portal that is widely used by individuals and attorney firms. There are currently over 50,000 registered eServices users.
Customer responses from annuity firms, attorney firms and self-filers have been very positive. The B2B system has been adopted by the four major annuity firms (by volume) resulting in the majority of renewal transactions being processed automatically. As at December 2013, two Australian-based attorney firms had fully adopted B2B to file the transactions available. A further two are in the final stages of implementation.
The first significant release across both channels was in October 2012 when all new applications for all IP right types were implemented in both channels. IP Australia envisaged a gradual take-up of the new eServices/B2B. The aim was to reach about 80 per cent take-up two years after the release. These aims have been well exceeded.
Subsequent releases have seen improvements to the channels based on customer feedback, as well as improvements to support Raising the Bar legislative changes.
In late 2013, IP Australia introduced the “General eService” functionality and “Make a Payment”. These latest enhancements allow users to submit the remaining transaction/service request types including amendments, assignments, extensions of time, opposition matters, international services, invoice payments, and responses to examination reports.
Audience specific activities
Exporters:
IP Australia continues supporting the Export Council of Australia with relevant news, information and seminars for its members. A key highlight for 2013 was an increased promotion of the Madrid Protocol and it benefits for exporters managing international trade mark portfolios.
Accountants:
IP Australia is working with Certified Practising Accountants (CPA) Australia to provide an information campaign on intellectual property for CPA members built on the success of our collaboration with the Institute of Chartered Accountants.
A Working Group of industry experts has been formed to guide and support this work. The group met recently and identified IP topics to be presented during the next twelve to eighteen months.
Engineers:
IP Australia has begun collaboration with Engineers Australia. Opportunities for a closer working relationship would ultimately result in greater access to distribution channels, thus improving IP Australia’s ability to directly promote the value and benefits of intellectual property to this sector. Early drafting is underway for a joint IP educative program agreement that will target Engineers during 2014 and beyond.
SMEs:
IP Australia continued to work with AusIndustry and Enterprise Connect to extend efforts to promote IP to regional centres across Australia through a range of workshops and seminars.
Stakeholder engagement
In 2013, IP Australia undertook a range of engagement activities with both business and non-business aligned stakeholder interests. The underlying objective of these engagement activities, and the target audience/s, varied subject to the intended strategic or operational outcomes sought. This may have included policy and/or legislative consultations, public education and awareness (PE&A), or intellectual property (IP) advocacy more broadly.
IP Australia’s three primary engagement mechanisms are outlined below:
IP Professionals Forum (IPPF)
The IPPF is IP Australia’s principle round table meeting for consultation, discussion and information exchange on IP matters that relate to IP professionals and practitioners. IP Australia hosted two of these forums in 2013.
IP Forum (IPF)
The IPF is a bi-annual event which draws together attendees from industry, the attorney profession, government and media. The IP Forum is structured around a topical theme relating to the registered IP system. It serves three key functions for IP Australia: Firstly, it provides delegates with a unique opportunity to network broadly, and in particular, with key executive staff from IP Australia. Secondly, matters discussed at these IP Forums are used by IP Australia to help improve the registered IP system. Lastly, the IP Forum is used as a key communication channel to promote the positive contribution that IP makes to the Australian economy.
IP Australia hosted two of these forums in 2013. The event themes included:
• The future of IP practice in Australia
• Making ideas make money – the nexus between innovation, collaboration and commercialisation
Executive Visits Program (EVP)
The EVP is a comprehensive program of face-to-face meetings with chief executives (or equivalent) concerning IP issues that IP Australia wishes to seek views and feedback on. The EVP provides the agency with a valuable opportunity to learn how users of the IP system maximise the value of their intangible assets.
In 2013, IP Australia met with 28 companies, across a broad mix of industry sectors.
Indigenous Stakeholder Engagement
IP Australia has continued to attend workshops and events around Australia to promote Dream Shield, a program to raise awareness of intellectual property rights to Indigenous Australia. Events of note included the 6th Indigenous Economic Development Conference in Alice Springs Northern Territory, where IP Australia presented on the theme of ‘taking care of business’. Development is underway to expand the scope of Dream Shield to include important aspects of Copyright and Moral rights following lobbying from representatives of the Indigenous creative industries sector.
State Office Events
There were approximately 70 events undertaken in 2013 by the State Marketing Managers. These events targeted a wide range of audiences including SMEs, students, legal practioners and exporters
Other events of note
In August 2013 IP Australia in partnership with WIPO hosted the ‘Doing Business Internationally’ breakfast seminars. Four of WIPO’s senior staff addressed IP professionals about some of their key initiatives. The presenters specifically discussed: WIPO’s Programs and Services for Business, including Global Databases, Global infrastructure and World Reference; the latest developments in the PCT and the Changing Face of Innovation; using the Madrid system to the best advantage; and WIPO’s approach to Alternative Dispute Resolution.
The seminars, which attracted approximately 150 delegates, were held in Perth, Melbourne and Sydney.
Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.
• In 2013 IP Australia launched the Regional Patent Examiner Training (RPET) program. RPET – a comprehensive distance learning capability for patent examination training for overseas IP offices developed under the ASEAN-Australia-New Zealand Free Trade Area (AANZFTA) Economic Cooperation Support Programme (ECSP).
• RPET is a modern, comprehensive and intensive competency based online training program which is based on IP Australia’s existing training framework, with a focus on search and examination according to the PCT standards. A Virtual Learning Environment provides access to online RPET resources, enables remote and real-time delivery of training (via virtual classrooms) as well as collaboration among participants located in different countries and across different time zones.
• The objectives of RPET are to:
• Build the patent examination capabilities of participating offices by improving examiner competence via a comprehensive, integrated and remotely delivered training program that results in competency comparable to reaching IP Australia’s Acceptance Delegation for examining to PCT standards.
• Provide on-going mentoring and support throughout the program using a combination of face-to-face training, supervision from local and Australian examiners and online learning technology.
• Enhance patent examination standards of participating offices, which will lead to the granting of higher quality and consistent patent rights and increased business confidence throughout the ASEAN region.
• The first RPET intake in April 2013 included eight patent examiners from Malaysia (2), the Philippines (2), Indonesia (2), Kenya (1) and the African Regional IP Office (1).
IP Australia presented at the following seminars and workshops in 2013:
• The IP Public Education and Awareness Community of Practice Workshop in Thailand in May 2013. The goal of this AANZFTA project is to develop a sustained and strategic approach to IP public education and awareness in order to maximise the effective use of the IP system by businesses and creators in the region. The beneficiaries should be not only regional innovators but the economies of ASEAN Member States.
• Search & Examination Sharing -- IT Tools and Solutions Workshop held in Beijing. Examination and IT experts from IP Australia, Brazilian INPI, EPO, JPO, KIPO, WIPO, and SIPO met together to discuss the current practice and future plan of work sharing cooperative projects among offices.
• Best Practices in Patent Work Sharing, Examination and Promotion held in Singapore in August 2013. The focus of this workshop was to promote work-sharing initiatives to officials from within the Asia-Pacific Region.
VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF PATENT INFORMATION
International exchange and sharing of patent information in machine-readable form, e.g., priority documents, bibliographic data, abstracts, search reports, full text information
Certified copies of Australian patent applications for use as priority documents in foreign applications are provided in paper form. Priority documents on which Australian applications are based are required in paper form. Priority documents can also be provided in electronic form using the WIPO DAS service.
Participation in international or regional activities and projects related to patent information
Studies of this kind are typically carried out by the IP Institute of Australia (IPRIA). At times, IP Australia specifically commissions IPRIA to conduct this research.
Assistance to developing countries
• Through the WIPO Funds-in-Trust theme of developing the IP system, IP Australia has supported the following activities in 2013:
• Sub-regional Seminar on the PCT in South Africa February 2013
• Sub-regional workshop on the PCT in the Asia-Pacific on PCT procedures and Practices in Singapore April 2013
• Patent examiner training for Egypt as an ISA & IPEA in Australia June 2013
• National Workshop on IP and Technology Management for Universities and Research and Development Institutions – Jakarta, Indonesia (May 2013)
• National Workshops on IP valuation - Hanoi and Ho Chi Minh City, Viet Nam (June 2013)
• National Training on “Successful Technology Transfer” – Bangkok, Thailand (May 2013)
• National Workshop on Patent drafting in Vietnam in September 2013
• International Forum on IP valuation in Malaysia in November 2013
• National Advanced Training Program on Successful Technology Licensing in Thailand (November 2013)
• Development of national IP strategies – Cambodia, Solomon Islands, Vanuatu & Tonga
Other activities
For further information visit the IPRIA website:
http://www.ipria.org/
VII. OTHER RELATED MATTERS
| 1. | Classification is allotting one or more classification symbols (e.g., IPC symbols) to a patent application, either before or during search and examination, which symbols are then published with the patent application. |
| 2. | Preclassification is allotting an initial broad classification symbol (e.g., IPC class or subclass, or administrative unit) to a patent application, using human or automated means for internal administrative purposes (e.g., routing an application to the appropriate examiner). Usually preclassification is applied by the administration of an office. |
| 3. | Reclassification is the reconsideration and usually the replacement of one or more previously allotted classification symbols to a patent document, following a revision and the entry into force of a new version of the Classification system (e.g., the IPC). The new symbols are available on patent databases. |