Patentology (LexBlog Australia)

As I recently reported, Australian patent filings in 2023 fell slightly, by 2.4%, over the previous year.  This implies, of course, that patent attorneys filing applications on behalf of domestic and foreign clients should, overall, also have experienced a similar decline new filings.  But, of course, individual firms fared differently in the competition for this...

In 2023 the total number of standard patent applications filed in Australia remained above 30,000 for the third year running, despite a 2.4% drop in filings. This follows a decline of nearly 0.5% in the previous year. However, whereas the decline in new applications in 2022 was due to fewer filings by Australian residents (with...

IP Australia has published a draft of its four-yearly Cost Recovery Implementation Statement (CRIS), which outlines proposed fee changes that would take effect from October 2024.  It is also taking the opportunity to review the hearing costs that may be awarded for Patents, Trade Marks and Designs.  Feedback on the proposals may be provided via...

Governments around the world are considering how they can – and should – regulate the development and deployment of increasingly powerful and disruptive artificial intelligence (AI) technologies.  Australia is no exception.  On 1 June 2023, the Australian government announced the release of two papers intended to help ‘ensure the growth of artificial intelligence technologies (AI)...

In 2022, for the second year running, the number of standard patent applications filed in Australia exceeded 30,000.  While there was a slight decline of 0.5% compared with 2021, filings remained at a historic high.  This was, however, primarily due to continuing growth of nearly 1% in applications originating overseas.  Applications from Australian residents fell...

IP Australia – the government agency responsible for administration of Australia’s patent, trade mark and design registration systems – has an important role to play in educating the public about the value of intellectual property and the requirements and processes for securing IP rights.  Generally speaking, I think it does a good job of this. ...

Back in August, the High Court of Australia handed down a ‘decision’ on the patent-eligibility, under the ‘manner of manufacture’ test in Australian law, of claims directed to computer-implemented electronic gaming machine (EGM) technology developed by Aristocrat Technologies Australia Pty Ltd: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents [2022] HCA 29.  Unfortunately, the..

I joined Twitter in June 2010.  I did not really know what Twitter was, or how it worked, but there was a lot of ‘buzz’ around it, and I wondered if it might be a useful channel to share and promote the blog that I had just created.  That turned out to be a good...

On Friday 11 November 2022, three judges of the High Court of Australia (Gordon, Edelman and Gleeson JJ) refused – with costs – Stephen Thaler’s application for special leave to appeal a decision of the Full Court of the Federal Court of Australia determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an...

In 2021, at the height of the COVID-19 pandemic during which Australia’s two most populous cities spent long weeks under conditions of strict lockdown, the number of Australian standard patent applications filed by Australian resident applicants jumped by over 25%, to levels unseen since a rush on filings prompted by the Raising the Bar patent...

Since its establishment in 2009, by the Melbourne Law School in conjunction with the Institute of Patent and Trade Mark Attorneys of Australia (IPTA), the annual Francis Gurry Lecture on Intellectual Property has rightly become a highlight on the Australian IP calendar.  Past presenters include former Chief Justice of the High Court of Australia Robert...

In a keenly-awaited – and thus hugely disappointing – ‘decision’, the High Court of Australia has failed to satisfactorily resolve the question of whether patent claims directed to electronic gaming machine (EGM) technology developed by Aristocrat Technologies Australia Pty Ltd are directed to patent-eligible subject matter: Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents...

On 10 March 2022, the High Court of Australia granted Aristocrat’s application for special leave to appeal the decision of a Full Bench of the Federal Court, which found its claims directed to an Electronic Gaming Machine (EGM) implementing a new ‘feature game’ to be ineligible for patenting under Australia’s ‘manner of manufacture’ test of...

On 10 March 2022, the High Court of Australia granted Aristocrat’s application for special leave to appeal the decision of a Full Bench of the Federal Court, which found its claims directed to an Electronic Gaming Machine (EGM) implementing a new ‘feature game’ to be ineligible for patenting under Australia’s ‘manner of manufacture’ test of...

In the Patents chapter of its recently-published 2022 IP Report, IP Australia provides the usual annual filing statistics for 2021.  According to the report, there were 23,371 Australian standard patent applications filed as National Phase Entries (NPEs) from international applications under the Patent Cooperation Treaty (PCT), 9,026 standard applications filed directly in Australia, making up...

On Monday 16 May 2022 the European Patent Office (EPO) is running an online conference on ‘Inventorship in Patent Law’.  It commences at 1.30pm Central European Summer Time (CEST), which is 9.30pm on the east coast of Australia (AEST), 9.00pm in South Australia, and a positively civilised 7.30pm in Western Australia.  It is, unfortunately, a...

In a decision handed down on 13 April 2022, a panel of five judges of the Federal Court of Australia (‘Full Court’) overturned last year’s controversial ruling by Justice Jonathan Beach, determining that the (alleged) ‘AI inventor’ DABUS cannot be named as an inventor for the purposes of applying for a patent in Australia, and...

In my previous article I presented some data on Australian standard patent application prosecution events between 2017 and 2021.  While the total number of events (examination requests, examination reports, responses and acceptances) has remained fairly consistent in recent years, the data shows that the number of examination requests filed each year has increased since 2019,...

In my previous article I presented some data on Australian standard patent application prosecution events between 2017 and 2021.  While the total number of events (examination requests, examination reports, responses and acceptances) has remained fairly consistent in recent years, the data shows that the number of examination requests filed each year has increased since 2019,...

With significant increases in both standard and (especially) innovation patent applications, 2021 should have been a bumper year for patent attorneys operating in Australia.  And although that was true overall, the benefits were not uniformly distributed.  While some smaller firms experienced gains in filing numbers well above the overall growth rate, a number of larger...

On 18 March 2022, the Full Court of the Federal Court of Australia issued decisions relating to term extensions of patents covering pharmaceutical products: Commissioner of Patents v Ono Pharmaceutical Co. Ltd [2022] FCAFC 39 (‘Ono’); and Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2022] FCAFC 40 (‘MSD’).  The two decisions have (at...

On 9 February 2022, the appeal by the Commissioner of Patents against the decision of Justice Beach finding that the ‘AI’ machine known as DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) could be named as inventor on a patent application filed by Dr Stephen Thaler, was heard before an expanded Full Bench of...

On 9 February 2022, the appeal by the Commissioner of Patents against the decision of Justice Beach finding that the ‘AI’ machine known as DABUS (‘Device for the Autonomous Bootstrapping of Unified Sentience’) could be named as inventor on a patent application filed by Dr Stephen Thaler, was heard before an expanded Full Bench of...

The number of standard patent applications filed in Australia exceeded 30,000 for the first time in 2021, increasing by nearly 3.6% over the previous year, and following on from two successive years of decline. Growth was driven primarily by direct national filings, with PCT national phase entry (NPE) filings up by less than 1% on...

If you are a policy-maker, prospective business partner or investor, IP Australia wants you to know that a useful way to identify small and medium enterprises (SMEs) with high growth potential is to look at their IP activity.  A new research report from the Office of the Chief Economist, titled Intellectual property rights and enterprise...

In a unanimous decision – Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 – a Full Bench of three judges (Middleton, Perram and Nicholas JJ) of the Federal Court of Australia (‘Full Court’) has reversed last year’s ruling by Justice Burley that claims directed to a so-called ‘feature game’ implemented on...

Data on patent acceptances into 2021 confirms that the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘RtB Act’), which came into effect on 15 April 2013, has had a minimal impact on the rate of patent application acceptance in Australia – and to the extent that an effect is present, it does not...

Recently, both Australia and New Zealand have reached ‘agreement in principle’ on proposed free trade agreements (FTAs) with the UK.  Details of the Australia-UK agreement in principle can be found on the Australian Department of Foreign Affairs and Trade (DFAT) website, while the NZ-UK agreement in principle is available from the NZ Foreign Affairs and...

The innovation patent has been Australia’s second tier patent right since 2001, but it is now being phased out.  Just over two months have now passed since the final day on which new, original (i.e. not derived from an existing application) innovation patents could be filed.  As of 26 August 2021, the only way to...

As I recently (tentatively) predicted, on Friday 30 July 2021 Justice Beach in the Federal Court of Australia handed down a judgment giving Australia the dubious honour of becoming the first country in the world to legally recognise a non-human as a valid inventor on a patent application: Thaler v Commissioner of Patents [2021] FCA...