Innovation patents - in need of better formalities review

Michael Bates, a patent attorney and solicitor with 1 Place Patent Attorneys and Solicitors, wrote in with the following query.

It seems as though a slightly more thorough formalities review prior to grant of an innovation patent would be in order. (There are of course a couple of strategic options for people trying to do a freedom to operate analysis, such as focussing on independent claims and paying to have the patent examined, but this misses the point.)

We'd love to hear your comments:

Is there a blog concerning the paradoxes in policy implementation of the Patent Act 1990?

An example of such a paradox is as follows:

Section 40 Specifications

... (2)(c) where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.

However, in practice practitioners are lodging innovation patents and IP Australia is sealing innovation patents with more than 5 claims (example: Innovation patent 2008100748 sealed with eight claims).

The consequence of this that an innovation patent can be lodged and sealed with say 100 claims and not examined for up to eight years. A competitor/third party is consequently placed in the difficult position of possibly having a V&I analysis performed on a broader scope of claims at considerable expense before the innovation patent is examined.

Only at examination will the claim number be reduced to five claims. At this stage the applicant can decide which claims they wish to run with. This creates considerable uncertainty in the patent system, particularly since a competitor/third party is less likely to request examination when the applicant can narrow the scope of the patent to maximise their interest at examination. Also, it is unclear to me why IP Australia deals with an issue such as the maximum number of claims (5) as a substantive issue, to be left until examination, rather than as a procedural issue, which can be the basis for rejecting the application until amendment. The end result with an innovation patent is that the patent can be sealed (albeit unenforceable) with a larger number of claims than is permitted under s 40. This practice appears to be in contrast to what the legislation states both in spirit and through black letter interpretation. Why the number of claims is less important than other procedural issues such as the size of the margins is mystifying.

Section 40 requirements relate solely to an innovation patent application, not requirements for examination for a certified innovation patent. The consequences of IP Australia not considering the number of claims until examination raises the following difficulties:

1. Uncertainty arises with the innovation patent system;
2. The cost and risk to a third party requesting examination is considerably increased; and
3. with such a paradox it is not in a client's interest to lodge an innovation patent limited to 5 claims, since the scope of the innovation patent can remain ambiguous until examination is requested.

I have raised this issue with one of IP Australia's senior examiners, who stated that s 40 issues are not considered until examination; however, they could not give the basis of such a policy decision.

Moreover, they stated that they had never previously considered the issue and I could write to the policy unit; however, they are unlikely to consider such an issue from a single attorney. Consequently, I feel that there should be a forum for policy and practice paradoxes.

Please let me know your thoughts on the s40 policy paradox and is there such a forum to debate these Australian issues openly?

Kind regards

Michael

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Dr Michael Bates

Registered Patent Attorney + Solicitor

1 Place Patent Attorneys + Solicitors