Impact of Raising the Bar reforms on patenting behaviour

April 2013 was a frenetic month of patenting activity in Australia. New data from the Australian Patent Office illustrates the profound effect of recent patent law reform on the number of requests for examination. The data is presented below.



Reforms
The changes to the law included more stringent standards for:

• Inventive step.
• Disclosure in patent specifications.
• Amending patent specifications.
• Proof during examination and opposition.

Most of the changes apply to applications where examination was requested on or after 15th April 2013.

In view of the impending changes, most practitioners advised their clients to consider requesting examination before 15th April so that their applications would be examined under the old, less stringent provisions. Clients were also encouraged to consider early filing of contemplated patent applications along with an examination request.

Pre-examination process
The Australian Patent Office usually issues a direction to request examination between one and two years after a patent application is filed, if the applicant has not already voluntarily requested examination. Before 15th April, the applicant had six months from the date of the direction within which to request examination. A final deadline of five years from the date of filing a patent application also applies, whether or not the Patent Office has issued a direction.

Effect on examination requests
Remarkably, the data shows that in the month ending 14th April 2013, applicants filed nearly 22,000 requests for examination. This represents nearly 15 times the "normal" monthly average.

Breaking down the figures, the number of requests for examination in response to a direction increased from around 850 to a peak of almost 1,700 a month. As expected, the increase in the number of voluntary requests for examination was much more significant, rising from 576 to peak of over 20,000 a month.

Even though applicants had been advised to request examination early in order to avoid the rush, the data indicates that this advice had little effect: a significant majority of applicants left it until the last month to take action.

Effect on patent filings
The pending changes also prompted an increase in the number of patent applications filed (including national phase entries and divisional applications).

Implications
The data demonstrates how IP law reform can significantly influence applicant behaviour. It also highlights the importance of policymakers carefully considering the impact not only of the reforms themselves, but also of the transitional provisions introducing them. The Patent Office originally proposed applying the reforms to all patent applications where a first examination report had not issued. If this proposal had been implemented, applicant behaviour around 15th April would have been dramatically different.

The spike in examination requests is likely to lead to a significant increase in the average time taken by the Patent Office to examine a patent application following a request. In the past year, the Patent Office appears to have received more than double the usual number of examination requests. It is therefore unsurprising that since the start of 2013, the Patent Office has generally issued directions only in cases where the five-year deadline is approaching.

Under its Customer Service Charter, the Patent Office aims to "examine and issue first [examination] reports on applications for standard patents within twelve months of receiving the request for examination". For patents granted in 2012, the average period was 11 months (according to the recently released Australian Intellectual Property Report 2013). It seems that patent examiners will have their work cut out for them if this period is to remain below two years.

Applicants wishing to have their patent applications examined sooner may request expedited examination. The Patent Office grants such requests where it is in the public interest (eg, where the invention relates to "green" technology) or where "special circumstances" apply.

The author would like to acknowledge the Australian Patent Office for providing the relevant data.