The IP Factor » Australia

Australian Patent Office Opens Melbourne Examination Center

Dr Michael Factor — Thu, 10 Sep 2009 09:29:40 +0000

According to a press-release issued by the Australian government, a patent examination office is to be opened in Melbourne, providing 41 local jobs. See:

http://www.ipaustralia.gov.au/pdfs/news/Melbourne%20Patent%20Examination%20Centre%20Opens%20FINAL.pdf

We hope this is a sign of increased interest in patenting, signifying that the World Wide Recession is soon over.

Israel Restores Australian Patent Office’s Kashrut Certificate

Dr Michael Factor — Mon, 07 Sep 2009 09:09:19 +0000

In Patent Office Circular, M. N. 75, the Israel Commissioner of Patents, Dr. Meir Noam, has restored Australia to the list of countries whose examination is considered on a level with the Israel Patent Office’s standards, such that as far as novelty, inventive step, unity of invention and utility is concerned, if the Australian patent office grants a patent for an invention, the corresponding Israel application is allowable under Section 17c of the Law, providing the claim-set is conformed.

Back in 2008, Dr. Noam removed Australia from the list but did not provide any explanations for his actions. Presumably the decision was based on some perceived flaw in the Australian examination. Apparently Dr. Noam is now assured that Australian patents are up to standard.

Whilst accepting Dr. Noam’s authority to decide who should and should not be in the list, we believe that in the interests of transparency, the Commissioner should provide at least minimal explanation for such changes.

Which patent office is better; Australia’s or Israel’s?

Dr Michael Factor — Sun, 31 May 2009 10:25:29 +0000

Back in December 2008, the Israel Commissioner of Patents, Dr. Meir Noam, ruled that an Australian patent was no longer to be considered as an acceptable basis for allowing allowance under Section 17c of the Israel Patent Law, without substantive examination in Israel. Presumably the decision indicates a dissatisfaction with Australian patent examination as not being considered as being of appropriate standard. See http://blog.ipfactor.co.il/2008/12/09/israel-patent-…an-counterpart/

A recent Taylor Wessing Global IP Index 2009 has rated Australian IP standards very highly, at #4 globally

http://www.taylorwessing.com/ipindex/. This contrasts favorably with Israel, ranked 12th overall and 14th for patents.

Golja Haines & Friend http://www.fghip.com.au/ have informed us that Australia now allows electronic filing, and they have even developed a system to help clients file PCT national phase entries into Australia in a convenient manner, via a portal on their website.According to colleague, Patent Attorney Shimon Shalit (who, as an ex-Examiner received a much sought after invitation to the exclusive Opening Ceremony of the new premises) there are plans to allow electronic filing of Israel patent applications next year.

Australia, like Israel, has a modified examination, http://www.ipaustralia.gov.au/pdfs/patents/specific/modified.pdf allowing a patents to issue, based on a corresponding foreign patent being allowed. The list of countries includes: the USA, Canada, New Zealand, or a country that is a signatory of the European Patent Convention, for example the United Kingdom.

Perhaps Israel’s dropping Australia from the list of Section 17c countries is a reflection of Australia not including Israel on their list?

Australian Patent and Trademark Agency Sacks 11 Contractors

Dr Michael Factor — Wed, 25 Mar 2009 11:15:15 +0000

The Australian Patent and Trademark Agency, like that in Israel, US and Europe, operates as a closed agency, using income from filing fees and renewals to pay salaries.

Recently, they’ve laid off eleven examiners as much of their income comes from incoming foreign filings.

Mr Noonan, the director, explained that:

”Due to the global economic downturn, there has been a reduction in applications which has affected our revenue.”

Apparently, only one week’s notice was given. The examiners are contractors and not employees, making redundancies easier.
Trademark applications in Australia are down about 15% compared to this time last year, while patent applications are down 5-10 per cent.

The Australian Government’s Gershon review found an over-reliance on contractors within government agencies and recommended replacing 50 per cent of contractors with permanent public servants over three years.

In Israel, use of employment agency staff instead of government employees with permanence was made illegal some yeas ago. In examining patent applications there is a confidentiality issue with temporary examiners having access to confidential documents. Even with trademarks, there is, as Israel Commissioner Meir Noam pointed out, a problem with someone not directly working for government granting an exclusive use for a mark to an entity, thereby restricting the rights of the public.

That said, Unofficial sources in the Israel Patent and Trademark Office report a drop of some 20-30% in new applications. Israel, like Australia is an important jurisdiction for filing in, but less so that the US, Europe, China, Korea or Japan. When a company decides to cut back on their IP budget, and file in say, 5-6 countries, rather than 7-10, Israel and Australia are worst hit. That said, the Israel Patent Office is still recruiting and no redundancies have been announced.