ACIP REVIEW OF INNOVATION PATENT SYSTEM

Referring to our previous blog dated 13 September 2013, ACIP had been undergoing a review of the Innovation patent system.  On 16 June 2014, ACIP issued the final report on its findings for consideration by the government.  The final report can be found here:

http://www.acip.gov.au/pdfs/ACIP_Final_Report_-_Review_of_the_Innovation_Patent_System.pdf

The report makes somewhat infuriating reading.  The report does not commit to whether the innovation patent system should be retained or abolished.  However, if it is retained, the recommendations are that changes are necessary.

The main recommendations for change are:

1. Making substantive examination of innovation patents compulsory;
2. Restricting patentable subject matter for innovation patents by excluding all methods, processes and           systems;
3. Raising the threshold test for innovative step.

It is hard to argue that item 1 is not a sensible recommendation and would certainly give a degree of certainty and credibility to the system.

Item 2 appears to be trying to be a change based upon tailoring the system to accord with utility model systems in other countries, but the suggestion of excluding ‘systems’ may put this a step too far.

Item 3 is where the main debate lies.  The recommendation is to adopt an ‘old’ inventive step test. Something which is of a lower threshold than the current inventive step test (in order to fulfil the third tier role of the innovation patent), but is higher than the current innovative step.  The problem is that the test proposed brings more uncertainties than certainties to the test.  The test proposed will be a question of obviousness, but obvious in light of what?  The concern is the role that prior art will play in the proposed test.  Prior art will only be considered if it is part of the ‘common general knowledge’.  But that means prior art will have to be proved to be part of the ‘common general knowledge’ in order to be considered.  That, as the past has shown, is beyond the job of an examiner.  Furthermore, that has been the basis for the biggest waste of time and expense in past patent litigation.

Bearing in mind that this final report is merely a recommendation for change and that actual change must come from the government, we must wait and see if anything actually happens in respect of change.

Simon Ellis

ATOMO wins best in show at MDEA

Franke Hyland are delighted to congratulate Atomo Diagostics Pty Ltd on being awarded the top honours at the international Medical Design Excellence Awards in New York.

Atomo’s innovative AtomoRapid HIV test device provides excellent usability and accuracy, at a very cost effective price point.  Franke Hyland is honoured to have Atomo as a client, and has assisted for several years with their international IP strategy, encompassing several patent families, trade marks and designs.

http://www.businesswire.com/news/baybio/20140611006631/en

by Peter Franke

End of Financial Year Deadlines for Government Assistance

Various forms of grants are available to assist early stage businesses and beginning exporters.  

Export market development grants (EMDG's) are a long running Federal Government program designed to assist new exporters. They provide a grant of up to 50% of expenses incurred in relation to launching and developing export markets, covering expenses such as:

• Overseas promotion and travel costs
• Trade fairs
• Marketing visits
• Promotional literature and advertising
• Visits from overseas buyer
• Intellectual property registration and insurance costs

The grants are available on the basis of funds being spent and then claimed. There are a set of detailed criteria for eligibility, mainly to prevent any rorting of the system, but any Australian resident IP developer or manufacturer is very likely to be eligible. There are caps on the maximum and minimum amount that can be claimed, and on the size of business (turnover under $50  million).

As a bonus, in the first year you can claim expenses back for the last two tax years, which could be a great head start for any emerging exporter.

Intellectual property expenses which are allowed include those which relate to registration of patents, trade marks, designs, plant breeder’s rights, and copyright.  It does not cover expenses relating to Australia or New Zealand, but it does cover the costs of seeking protection in other countries, including your Australian attorney’s fees, official fees and foreign attorney costs.

For more information, contact us or to http://www.austrade.gov.au/What-Is-EMDG/default.aspx 

It is important to understand that costs must be incurred in this financial year and paid for this year to be claimable, so if there is anything about to be due, you can bring the action (and expense) forward and claim it this year. 

Peter Franke