In a recent roundtable discussion relating to the review of the innovation patent system, a view point was raised that self-filed innovation patent applications that in no way meet (recognise) even the most basic requirements parts of the Patents Act and that will in no way provide meaningful protection to the applicant or scope of protection anticipated by the applicant should not pass to grant and thus publication. Publication is usually akin to the applicant shooting itself in the foot as they can lose the right to correct the issues.
Other concern raised include a view that IP Australia almost seems to promote innovation filings as something that could be done by non-attorneys, independently of attorneys, and achieve the anticipated goal. Yes, a patent is usually granted to an applicant, but when it comes to enforcement the applicant quickly realises that IP Australia could have more strongly warned them of the need for attorney assistance at the time of filing – rather than presenting potential applicants with a ‘watered-down message’ suggesting attorney assistance on IP Australia’s website.
Some attorneys believe that the formalities check carried out after filing should be expanded. In particular, IP Australia could consider whether the specification includes a written description that appears to describe an invention and whether the specification has a set of claims that define an invention. If checked in this manner, applicants of self-filed applications could be more strongly warned of the need for statutory compliance/attorney assistance. Either a formalities notice could issue, requiring the applicant to provide a reply of sorts, or a warning notice could simply issue saying that the application will shortly proceed to grant but there appear to be major defects in the application which could result in any issued patent being unenforceable.
Perhaps an expanded formalities check could be conducted for those applications lacking an attorney’s address for service.
The number of self-filings is not a sign of the innovation patent system working, it is an indication of disasters yet to happen when wishing to enforce rights in those patents or to protect those same inventions abroad.
The innovation patent system was introduced to help small to medium business enterprises. An expanded formalities check for self-filed applications will most certainly help.