Background

On the world stage there is a renewed push by national, regional and international IP protection agencies to find innovative solutions, at little or no cost to them, to address increasing criticism that too many patents are granted on inventions that have questionable inventive merit, and that the grant of exclusive rights for obvious developments is having a negative impact on innovation and competition.

IP Australia continues to examine avenues for improving the patent system in Australia and for addressing some of these concerns. In its consultation paper "Getting the Balance Right", released in March 2009, IP Australia proposed, among other measures, to lift the "non-obviousness" threshold for subject matter defined in the claims of a standard patent (for further details please see "Getting the balance right"). It has been suggested that the proposed changes would lead to standard patents being granted in Australia, following substantive examination, that are subject to the same or very similar validity considerations, insofar as novelty and inventive step are concerned, as those granted by patent offices in the United States, Japan, Europe and other examining jurisdictions.

However, as anyone who has pursued patent applications for the same invention across different jurisdictions can attest, even where novelty and non-obviousness standards are harmonised, different patent examiners will often raise different pertinent pieces of prior art in assessing novelty and non-obviousness, based not only on the level of experience and expertise of the examiner, but also on the information technology and other prior art resources available to the examiner. Thus, the path to a stronger patent system does not simply stop once harmonisation of substantive law across jurisdictions is achieved. One also has to consider how the examination process can be changed or improved.

In its consultation paper "Flexible Search and Examination", released in August 2009, IP Australia proposed the introduction of a multi-level examination system (for further details please see "Patent legislation – proposals for improving the IP system"). A cost-saving Level 1 examination gives an applicant the option of obtaining acceptance of a patent application with claims that are the subject of a patent granted by a recognised patent office in another jurisdiction. Level 1 examination is a viable option once the above-noted harmonisation of Australian obviousness criteria with those of other countries has been achieved. For IP Australia, this option reflects its desire, and that of other patent offices around the world, to avoid duplication of work on search and examination, thereby freeing up capacity and reducing examination backlogs, amongst other reasons. However, the inherent problem remains of having a single examiner carry out the novelty/obviousness assessment before acceptance of a patent.

Peer-to-Patent trial

Enter the latest initiative by IP Australia, a web-based Peer-to-Patent joint trial with the Queensland University of Technology, aimed at supporting the patent examination process and improving the quality of issued patents.

IP Australia advocates that one way of improving the quality and efficiency of patent (application) examination is to "encourage members of the community to pool their knowledge and locate potential prior art" which can be considered by IP Australia’s Patent Office during the normal examination process. The initiative will build on a growing trend to use Web 2.0 technology to enhance and invigorate government administration through "citizen engagement". IP Australia also emphasised that the Peer-to-Patent initiative will not abrogate the responsibility of a patent examiner at IP Australia to assess a patent application; rather, it will "assist a patent examiner by identifying prior art he or she might not otherwise have discovered or had access to".

Further details on the rationale, background, potential benefits and implementation of the Peer-to-Patent initiative can be found at www.peertopatent.org.au or www.ipaustralia.gov.au. It is likely to come on line by the end of November 2009 (or shortly thereafter).

Web 2.0 functionality can indeed be used to facilitate and improve greatly the available option for voluntary third-party input into the examination of Australian standard patent applications. Section 27 of the Patents Act provides that persons may notify the commissioner of patents of matters relevant to the novelty and inventive step of an alleged invention claimed in a standard patent. For that reason alone, IP Australia’s initiative is to be welcomed.

The Australian Peer-to-Patent initiative is based on the Peer-to-Patent trial project run in the United States as a joint initiative of the New York Law School and the US Patent and Trademark Office (USPTO). Given this, and that the 12-month pilot is intended to mirror the position in the United States (ie, to test whether groups of distributed, self-selecting, non-government experts will come together and assist the Patent Office in its decision-making process during examination of technology claimed in a patent application), it is sensible to look at the experience gained in the United States. This is so despite the need to allow the Australian project to run its term, if only to establish whether similar patterns of use (or non-use) of this "peer review" functionality emerge.

In the two-year period that the project has been in operation, around 196 patent applications have been subjected to peer review, of which 92 are yet to be issued with an office action by the USPTO. In 22 of the 104 cases with mailed office actions, prior art uncovered in the peer review process was cited by the examiner in charge, and in 11 of those cases the US examiner also found the prior art independently. That is, in 11 cases peer review brought to light pertinent prior art not uncovered by the examiner. In the remaining 82 applications, the US examiner did not apply the peer review prior art in an objection as to novelty or inventive step.

The USPTO has placed a moratorium on extending its involvement in the pilot project, which ran for two years, beyond June 2009 until it can complete a full evaluation of the impact that the project has had on the quality of the examination process (see the P2P Second Anniversary Report by the Centre for Patent Innovations at the New York Law School). 

The US and Australian initiatives have been and are restricted to certain types of patent application. The Australian initiative will be limited to business method and e-commerce related innovations. Given the pilot project nature of the initiatives, this might be understandable at first glance. However, it would seem equally true that it is perhaps driven by the lack of in-house prior art resources at IP organisations required to conduct substantive examination.

In addition, because of the narrowness and specific nature of the subject matter that will be open to the peer group review process, it is unlikely that the results of the pilot project can be extrapolated into other technology sectors in determining the potential uptake of the Peer-to-Patent project in more traditional technology areas.

Perhaps, as with many changes, publicising the availability of the Peer-to-Patent pilot to as large an audience as possible will be determinative of its usefulness in assisting IP Australia in granting better-examined patents.