Cost benefits for Australian innovators seeking patent protection in China

Closer cooperation between the IP offices of Australia and China will lead to cost benefits for Australian innovators seeking patent protection in both countries.

IP Australia signed a Memorandum of Understanding for continuing cooperation with the State Intellectual Property Office of China on 25 February 2013 potentially make it more straight forward for Australian innovators to obtain Chinese patent protection for their inventions. The continuing cooperation should provide more consistent patent examination standards between each country. This will hopefully result in the patent grant process being facilitated in one country as a result of the grant of a patent in the other country reducing overall costs.

Increased cooperation between IP Australia and SIPO underlines the importance of the major reforms of Australian IP law coming into force under the Intellectual Property Laws Amendment (Raising the Bar) Act on 15 April 2013. One of the key objectives of these reforms is to raise the quality of patents granted in Australia such that the inventive step standard required for patents granted in this country will be more closely aligned with international standards. This will provide innovators with more certainty when applying for patent protection, both here in Australia and in other jurisdictions. Philip Noonan, the Director General of IP Australia has stated: “Australia’s patentability tests will be similar to large IP offices, including China …..This should make it more straightforward for Australian technology exporters to secure a patent in China”. Furthermore, Mr Noonan has stated that “Australia cooperates with intellectual property offices around the world. We strive to not only foster innovation but also to streamline work practices between countries, so as to reduce costs for innovators”.

In the discussions with Mr Tian Lipu, the Commissioner of SIPO, a range of issues important to both countries were raised, including patent quality management and work sharing. There included discussions in relation to WIPO-CASE, an online patent work sharing program created by the World Intellectual Property Organisation (WIPO) and the Vancouver Group comprising the IP offices of Australia, Canada and the United Kingdom. The IP offices of these countries are of similar size and development and have a similar legal heritage. Patent examiners from each Vancouver Group therefore routinely consider search and examination reports issued by other Group members. An aim of this Group is to investigate ways to reduce unnecessary duplication of work, and to contribute to a more effective approach to work sharing. This Group together with WIPO have therefore come up with the WIPO-CASE pilot system to make it easier to access results of search and examination from other offices. The Centralized Access to Search and Examination system (CASE) provides a digital library of search and examination reports that can be shared by participating IP Offices.

Also discussed was SIPO’s proposed cloud patent examination solution (CPES) which similarly aims to simplifying procedures for patent applicants and improving the efficiency of the offices when dealing with the same patent application. This was considered to also provide a very useful basis for cooperation between different IP Offices.