IP office interview: Protecting IP Down Under
Australia has been the home to 15 Nobel Prize winners in fields as diverse as economics, physics, medicine and literature. It is a country that boasts enormous contributions to journalism and politics across the world, with the likes of Rupert Murdoch and Julian Assange playing key roles in a number of global debates.
In the field of intellectual property, the Australian government’s passing of plain packaging legislation for cigarettes has aroused interest from IP professionals, right owners and others across the world. However, the legislation (Tobacco Plain Packaging Act 2011) has been challenged at the World Trade Organization by countries ranging from Argentina to Zimbabwe, and while politicians in the EU begin to debate introducing similar laws, Australia’s experience will remain at the centre of the global discussion.
Meanwhile, Patricia Kelly, director general of IP Australia, the nation’s IP office, has a keen focus on expanding the capabilities of the office beyond Australian borders, to address international interests.
She stresses the importance of increased “cooperation with other IP offices around the world” in order to be more effective for businesses that operate in an internationally economic environment.
“We are already sharing more information and building work-sharing arrangements with other IP offices and looking for ways to increase this in the future,” she adds.
One of the concrete examples she cites is a “single trans-Tasman patent application and examination process with our New Zealand counterparts”, which is contained within the Intellectual Property Laws Amendment Bill 2014, currently going through the Australian parliament.
The intention is to “remove duplication and streamline processes for customers seeking patent protection in both Australia and New Zealand”, she says, thereby making it easier for people to obtain protection for their ideas in both countries.
One of the foundations of such thinking comes from a general sense of optimism at the office. After the global financial crisis in 2007, the office had to respond to challenges from businesses that may have become more cautious about directing resources towards registering their IP. This caution translated into a drop in patent and trademark applications filed in the years following the recession.
But there has been some change. Kelly reports that “trademark activity recovered relatively quickly after the start of the global financial crisis, with filings in 2011 higher than 2007 peak levels”. But, she adds, the number of filings has been “relatively flat over the past few years”.
It has been a more positive story for patent applications. “Standard applications have been in an upward trend since 2009 lows, with 2013 seeing the single highest annual growth since 2004,” she says. Kelly reports that in 2013 the office received 29,717 standard patent applications compared with 23,675 in 2009.
Kelly attributes this improvement to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which she says was the “major driver of this growth” in some applications.
"Minor changes to the office’s administrative procedures will be introduced over the next 12 to 18 months to improve customer service and increase communication with applicants."
She describes the act as the “most substantial regulatory reform of Australia’s IP laws in many years”, saying it has made a number of “major improvements to the Australia system”. One of the improvements, she says, is increasing the quality of patents issued by the office.
On the surface it would seem the legislation has increased the pressure on her office. For instance, the law requires applicants to submit more supporting documents to examiners in order to obtain a patent, which means more time is needed for them to assess the quality of the application.
Other changes mean that the time applicants have to wait for their patents to be granted has dropped significantly. The time between a request for a patent or trademark application to be examined and the office confirming when it will assess it has dropped from six to two months. Parties can also expect their applications to be completed in just 12 months after they are first examined, much less than the previous period of 21 months.
So how does Kelly intend to manage the increasing demand at the office? As she has already identified, the sharing of resources between Australia’s and New Zealand’s IP offices will help with the increasing demand from patent applicants in the neighbouring countries.
Also, minor changes to the office’s administrative procedures will be introduced over the next 12 to 18 months to improve customer service and increase communication with applicants, Kelly says. Discussions between the office and applicants will happen much quicker.
She says: “Over the last few years, IP Australia has taken steps to improve customer interaction through system upgrades, new interfaces, and increasing the use of electronic communication with our customers.
