IP Australia

Statutory basis

The legal basis for the Australian patent system is Section 51 of the Constitution of Australia, wherein the powers of the Australian Government are defined. It states, in part;

"Section 51. The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to: … (xviii.) Copyrights, patents of inventions and designs, and trade marks:"

The current legislation is the Patents Act 1990 and Patents Regulations 1991.

Organisational structure

At 30 June 2008, IP Australia employed 996 employees, nearly all of whom are based in Canberra, Australia. Of these, approximately 200 [May 2006] are patent examiners and 110 [May 2006] are trade mark examiners, the remainder are managers and support staff. "About two-thirds, approximately 160, of the examination staff work on Patent Cooperation Treaty related applications." [June 2007]

Patent examiners

Patent examiners are generally scientists and engineers who do not necessarily hold law degrees but have received legal training in patent law. "A patent examiner is hired based on their technical expertise, their professional qualifications and possibly their industry experience. They then undergo training within the office, and we use competency based training. An examiner will take somewhere between 12 to possibly 18 months to become what is called an acceptance delegate. That means they are assessed to be competent to assess a patent application and make a decision about it qualifying or satisfying all of the legislative provisions." [June 2009].

"If you have not attained the Commissioner of Patents Acceptance Delegation within two years of the date on which you commence duties, you may have failed to meet a condition of your engagement, failed to complete your entry-level training courses and you may lack an essential qualification for the performance of your duties. Consequently, it is likely that immediate action will be taken to terminate your employment." [October 2010]

"APO is pursuing a medium-term strategy of continuing to engage patent examiners so that we can reduce that backlog during a time when our work is a little bit quieter, so that when economic activity picks up again we will be well placed. That is adding to our costs for patent examiners, in particular where we have continued to recruit." [June 2009]

In order to be an ISA, APO must have "at least 100 full-time employees with sufficient technical qualifications to carry out searches." [PCT Reg. 36.1 (i)]

Notable Australian patents

On 4 August 1868, Thomas Sutcliffe Mort and Eugene Nicolle filed Victorian Patent 1139 for "Refrigeration".

On 25 March 1885 Hugh Victor McKay filed Victorian Patent 4006 for a "Sunshine Stripper Harvester".

On 13 February 1904 the first Federal Australian Patent Application was filed by Andrew Brown McKenzie for "Improvements in air leak preventative for Westinghouse and like brakes.".

On 21 December 1914 George Julius filed Australian Patent 15133/14 for an "Automatic Totalizator".

On 22 November 1926 Hume filed Australian Patent 4843/26 for the "Spun Concrete Pipe".

On 10 September 1947 George Shepherd filed Australian Patent 136548 [Application 15008/47] for Furniture Castors.

On 2 May 1955 Mervyn Victor Richardson filed Australian Patent 212130 [Application 8770/55] for the Victa lawn mower.

On 22 March 1956 Lance Hill filed Australian Patent 215772 [Application 16938/56] for a fold-away handle design for the Hills rotary clothes hoist.

On 6 July 1970 Ralph Sarich filed Australian Patent 467415 [Application 30650/71] for "An Improved Rotary Motor", which later became known as the "Sarich orbital engine".

On 3 November 1977 The University of Melbourne filed Australian Patent 519851 [Application 41061/78] for "A Prothesis to Simulate Neural Endings", invented by I. C. Forster. This became known as the "Cochlear Bionic Ear".

On 7 May 1982 Arthur Ernest Bishop filed Australian Patent 552975 [Application 15178/83] for "Rack and pinion Steering Gear". This became known as the "Bishop Steering Gear".

On 6 July 1982 Norport Pty. Ltd filed Australian Patent Application 85668/82 for "Yacht Keel With Fins Near Tip", invented by Ben Lexcen. This became known as the "Winged keel" and was used on Alan Bond's Australia II yacht during its successful challenge to the America's Cup in 1983.

On 13 October 1986 Norman Thomas Jennings filed Australian Patent Application 35064/71 for "Pelletted Poultry Manure Fertilizer" that later became more commonly known as "Dynamic Lifter".

On 19 July 1991, CSL Limited and The University of Queensland filed Australian Patent 651727 [Application 23666/92] for "Papilloma Virus Vaccine", invented by Ian Frazer and Jian Zhou. This vaccine for cervical cancer is known as "Gardasil" or "Cervarix".

On 27 November 1992, the CSIRO filed Australian Patent 666411 [Application 51806/93] for "A Wireless LAN", invented by John David O'Sullivan, Graham Ross Daniels, Terence Michael Paul Percival, Diethelm Ironi Ostry and John Fraser Deane.

On 11 August 1995, Myriad Genetics, Inc. filed Australian Patent 686004 [Application 1995033212] for "In vivo mutations and polymorphisms in the 17q-linked breast and ovarian cancer susceptibility gene", invented by Donna M Shattuck-Eidens, Jacques Simard, Mitsuru Emi, Francine Durocher and Yusuke Nakamura. The patent claims the human BRCA1 gene. This patent provided the opportunity to test the legal validity of gene patents in the US. The US court held that composition patents were invalid, essentially because they are products of nature. This patent has yet to be tested in Australia.

On 24 May 2001, John Michael Keogh filed Australian Patent 2001100012 for "Circular Transportation Facilitation Device". This was, in simple fact, the wheel. IP Australia was awarded an Ig Nobel Prize in 2001 for granting this patent for one of the world's oldest known inventions. The patent was thereafter revoked on 30 August 2001.

Questionable grants

APO been criticised for granting patents for impossible or absurd, already known, or arguably obvious inventions.

In 2001 APO introduced an Innovation Patent system in which immediate grant occurred for applications which pass a formalities test. Innovation patents are aimed at providing protection for short market life products. To demonstrate the absurdity of the system, an innovation patent application was filed for the wheel and granted by APO. For this grant, IP Australia was awarded an Ig Nobel Prize in 2001.

"This article in the Sydney Morning Herald says that the application drew attention to: … some of the more glaring inadequacies in Australian patent law, where any member of the public may lodge an innovation patent application online, pay a fee and have the application rubber stamped within a matter of a few weeks, no questions asked. It made people laugh but did nothing to reform Australian innovation patent law." [October 2009]

Gene sequence controversy

There is current controversy on whether gene sequences are patentable subject matter. "Gene sequences are considered inventions under the current patent law. Firstly, they have to be isolated gene sequences and they must have identified an association with a particular disease. Therefore, they can be used as a diagnostic or a therapeutic. An isolated gene in its own right is not patentable." [June 2009]

"APO grants patents on genes only if there is a function described in a practical application and demonstrated.""IP Australia does not grant patents on genes, as they occur in nature." [October 2009]

"They were examined in accordance with the Australian patent law as it applied at the time, in accordance with the prior art that existed at the time, and they were granted in accordance with the law. The issue about their validity is something that would have to be tested through the courts, through the standard processes." [October 2009]

"The confusion around this point is not helped by reports that under Australian patent law a flower picked in the forest would be patentable. If that flower were not previously known then it would be a discovery. If, however, it was determined that an infusion of the flower administered to persons had a beneficial effect on breast cancer, then the substance extracted from the flower by the process of infusion would be an invention, which may be patentable provided it met threshold criteria such as novelty and inventive step. The flower itself would not be patentable." [August 2009]

"IP Australia’s data shows the number of patents claiming isolated human nucleic acid molecules steadily declining since the publication of the Human Genome Project" in 2001. At present there are 202 Australian patents claiming an isolated human nucleic acid molecule in force. [August 2009]

Unexamined patent application backlog

In 2007/2008 APO issued 16,933 patents to companies and individuals world-wide while receiving in that same year 33,482 patent applications. The numbers entering the system are almost double the numbers that are subject to APO actions. The disparity between the two numbers has led to a backlog of unexamined applications. While some lag in a transaction processing system is useful to smooth over periods of reduced activity (e.g. the GFC), sustained large disparities lead to mounting backlogs and greater delays. The inability of APO and all Patent Offices worldwide to cope with increasing application numbers is an ongoing and growing concern of the current business model.

In 1986-87 "the delays we had were in excess of three years in patents and in excess of two years in trade marks. We are on target in getting those delays down to our targets for 1990-91 of 18 months for patents and six months for trade marks." [October 1988] In 2007-8 the backlog of unexamined Australian patent applications had a general delay of 14.5 months in issuing a patent examination first report from an examination request date.

In 2009 "the backlog peaked at about 75,000 or a bit over that. APO made some progress over the last year or so in reducing that and it is now down to about 65,800." [May 2010]

Difficulties in patent examiner recruitment and retention

Like many offices around the world, APO is unable to recruit sufficient numbers of patent examiners to process the sustained overall demand. "The origin of this was rapid growth in patents around the world for about a decade leading up to about 2007 which, coupled with a strong economy here, made it very difficult for us to recruit and retain the kinds of scientists and engineers we needed to examine patents." [May 2010]. The expectation in 2006 was "to recruit over a two-year period 75 additional staff to end up with 250 at the end of that period [2008]. [May 2006] Recruitment campaigns for large numbers [~50] of patent examiners occur on an annual basis. [2009] "Sixty-eight new examiners were recruited during the year [2008-9], and the agency plans to add another 35 by the beginning of 2010. [October 2009]

In IP Australia, in 2007 the average length of service was 7.8 years. The turnover rate for ongoing employees was 16.5 per cent in 2006-7. [September 2007] "APO turnover in the last quarter was 7.2 per cent so if there were a staff freeze eventually numbers would fall across the organisation. It is difficult of course to anticipate where they would fall but if they fell, for instance, in the patent examination area then that would tend to reverse the recent gains we have made in reducing the backlog." [May 2010]

Patent examiner stress

"There is no doubt that, in the offices with large backlogs, examiners are facing considerable stress." "Even in the European Patent Office, there is little doubt that examiners face enormous pressures because of the backlog. [August 2009] In 2006-7 there were three claims for psychological injury within APO.

Trade Mark Examiner Stress

IP Australia target young people with legal degrees for trade mark examiners. They are put onto an 18-month contract of employment, with strict standards specifying that if the trainee does not meet the requirement demands if IP Australia within that time frame, they can (and do) have their employment terminated. The requirements currently are that they reach the APS (Australian Public Service) Level 5 as a trade mark examiner within 18 months of commencement, adhering to strict standards, in terms of quality and quantity, or their employment will be terminated. This has resulted in a high attrition rate for trainee trade mark examiners. Current examiners can be penalised by quality review over a difference of opinion and are not allowed to defend the decision even though written reasons for the decision are provided, further increasing stress and dissatisfaction.