Lower patentability standards – strategic responses

A regular reader of this blog who holds a senior IP-related position at a major Australian entity recently wrote in with the following comment (reproduced with permission):

(This person was responding to a recent post at IPRoo about IP Australia’s patent reform suggestions.)


I was interested in IP Australia’s initiative 3.3, especially “raise the level of patentability to international standards”. In working with inventor teams at ‘X’, I’ve come across at least three situations in which they were able to get patents in Australia and New Zealand, but nowhere else, despite years of trying (and expense). Do you think standards are lower in Australia? If so, is it advisable to try to take advantage of that situation by getting a “local” patent and hoping for the best elsewhere, or would companies be better advised to aim high in the first place (which might require using an overseas patent attorney?)"

Here are some initial thoughts – what would you add?

  • The threshhold for patentable subject matter is definitely lower in Australia, see for example my articles in March and May 2007 – Australia’s highest court raises the patent invalidity bar; and Australia even more patent-friendly after High Court decision;

  • The remedy to the situation described probably resides more in doing a good search before filing (even if it is just the PCT international type search after filing a provisional and following up with a 2nd better, provisional soon thereafter or as soon as you have better data…).

  • There are definitely some situations where a local patent is all an entity might need. However, there are a lot of missed opportunities with that approach. Even if you take this approach, you should remember that even though the patent was granted by a patent office, it doesn’t mean that the local courts would agree. Chances are if other patent offices think not, then the courts would also invalidate the patent.
  • I would be pretty wary about the value of a patent family which includes failed applications in some countries, even though it has granted patents in one or more jurisdictions of interest.
  • My experience is that the top patent drafters in Australia are just as good as elsewhere – there just aren’t as many of them, as the profession in Australia is smaller than, say the US or Europe.

2 Comments on “Lower patentability standards – strategic responses

  1. Duncan, I think your comment about searching is the tip of a rather large iceberg in regards to the ramifications of patent quality differences.
    As an observer, one should never assume a patent is not going to be granted in one territory because it failed in another.  Further, one should never assume that something very basic will not meet patentability criteria somwhere and dismiss a published patent claim as ‘unpatentable’.  We see companies placing too much reliance on this in the generics industry, at great expense.
    As an IP generator, I would suggest filing an application for every little modification you make to the prior art, and if that’s not cost effective publish it on IP.com or similar to stop someone else from patenting it.  The patent quality issues won’t change overnight, so if you can’t beat them, join them…
    Finally, never stop watching the patents and updating searches. Too many companies fail to realise that it takes 18 months from priority filing to publication. As you say, a slight change in the subject matter when working the invention could make a narrow search obselete – so try to search a little broader intially – it may cost more at the early stages but strategically you know where you can move (and where you cannot) if an identified patent is granted…

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