CHAPTER SEVEN
IP AUSTRALIA: OUTCOME ONE
7. IP Australia: Outcome 1
In this chapter, IP Australia reports on its performance against its strategic statement and strategic plan
and against the PBS. IP Australia reports against one Outcome in the PBS, and three associated subprograms.
Outcome 1 — Increased innovation, investment and trade in Australia and by Australians overseas,
through the administration of the registrable intellectual property rights system, promoting public
awareness and industry engagement, and advising government.
2009-10 target
($ million)
Result Achieved
($ million)
129.899
129.125
1.2 Awareness, Education and International Engagement
9.781
9.403
1.3 Advice to Government
5.012
4.97
Sub-program
1.1 IP Rights Administration and Professional Registration
IP Australia’s performance against the PBS will be discussed further in this chapter.
IP Australia performance
against Strategic Statement and
Strategic Plan
IP Australia’s Strategic Statement and Strategic
Plan 2009–14 define its direction over the next 5
years and prioritise strategic activities over the
same period. These activities are focused on
delivering robust IP rights efficiently. The priority
areas for 2009–14 are:
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Department of Innovation Annual Report 2009–10
■■
Quality and consistency — continue to strive for
the highest possible standard of quality in our
work so that granted rights are robust and able
to withstand any challenge.
■■
Stakeholder confidence — manage operations
and stakeholder relationships to ensure
we have an excellent reputation for the
effectiveness of our services.
■■
Speed and efficiency — offer timely and
efficient services which are consistent with the
needs of IP applicants and the community as a
whole.
Facilitate the strategic use of IP — enable
Australians to derive maximum value from
the IP system through effective education,
awareness and information services.
■■
Contribute to improving the IP System —
foster Australian innovation by shaping the
development of the IP system both at home
and abroad.
down on average while NPE applications from the
largest source of applications, the United States, are
7.5 per cent down on the numbers received in 2008–
09. As Figure 7.1 shows, domestic applications,
which make up approximately 15 per cent of patent
applications to IP Australia, have held up well during
2009–10, which is a sign of the relative strength of
the domestic market.
The global downturn and reduced
revenue
As firms around the world continued to scale
back investment, the number of applications for
IP rights remained below 2008–09 levels during
the financial year, which in turn reduced the
revenue available for IP Australia’s operations. As
a result the agency recorded an operating loss of
$2.1 million for 2009–10.
The demand for patents remained soft during
2009–10 and it is not clear when recovery will occur
(see Figure 7.1). However, during the second half of
the year under report, total applications received did
broadly match those received during the equivalent
period in 2008–09, suggesting that demand for
patent rights has bottomed. National Phase Entry
(NPE) applications through the Patents Cooperation
Treaty (PCT), which form the majority of patent
applications into IP Australia, are five per cent
Trade mark applications (which are predominantly
lodged by Australian applicants) signalled a return
to business confidence in the domestic market
by rebounding strongly in the second half of the
year, close to the peak levels of 2007–08. The
fluctuations in trade mark applications during
the year meant that examiner recruitment had to
be carefully managed. With the recent recovery
in application numbers, recruitment of trade
mark examiners will be necessary early next
financial year.
Despite revenue constraints, the agency continued
with three medium to long-term strategic priorities
to improve the IP system. These are:
■■
improving the timeliness of patent examination;
■■
introducing better ICT systems to reduce costs
and improve service; and
■■
upgrading the robustness and quality of the IP
rights granted by IP Australia.
Figure 7.1: Trends in standard patent applications, 2002–03 to 2009–2010
25000
20,392
Number of Applications
20000
16,278
16,119
17,483
20,797
19,285
18,788
18,607
15000
10000
5000
5,694
5,823
5,963
5,819
5,973
5,939
5,700
5,460
0
2002–03
National
2003–04
2004–05
2005–06
Patents Cooperation Treaty (PCT)
2006–07
2007–08
2008–09
2009–10
Financial Year
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91
Part B: Report on performance
■■
Figure 7.2: Trends in Trade Mark applications 2002–03 to 2009–10.
80000
Number of Classes Filed
70000
60000
50000
40000
30000
20000
10000
0
2002–03
Madrid
2003–04
OS non Madrid
2004–05
2005–06
2006–07
Financial Year
AU non Madrid
Each of these priorities involves multi-year
investments, which continued through the
economic downturn. The following three sections
outline what is being delivered in these three
key areas.
Improving the timeliness of patent
examination
Around the world, rapidly rising numbers of patent
applications over the past decade have resulted in
large backlogs of unprocessed patent applications
within national IP offices. These delays adversely
affect the innovation system and can foster
ongoing uncertainty about whether a patent will
be granted and, if so, the scope of the patent. This
creates difficulties not only for the applicant but for
other innovators who may be looking to work in the
area covered by the application.
In Australia’s case, rapidly increasing demand
for patents up to November 2008 combined with
difficulties in attracting and retaining enough
qualified staff resulted in a steady rise in the
number of outstanding applications and a reduced
compliance with its Customer Service Charter.
This backlog reached its peak in January 2009
when 75,255 patent applications were waiting to
be examined,
IP Australia has adopted a multi-faceted approach
to dealing with this problem: an attraction
and retention strategy for examination staff;
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Department of Innovation Annual Report 2009–10
2007–08
2008–09
2009–10
streamlining the examination process through
legislative reform; and engaging in international
efforts to reduce the duplication of work between
offices and to harmonise work practices with other
countries.
Despite revenue constraints, since 2008–09 IP
Australia has invested in a number of attraction
and retention initiatives which helped to reduce the
backlog of unexamined patent applications. These
have included:
■■
Intensive recruitment efforts. Thirty five new
examiners were recruited during the year
to complement 68 added in 2008–09 which
represented a more than 20 per cent increase
in the patent examination cohort;
■■
A new salary structure. During 2008–09,
IP Australia implemented a new collective
agreement with a more attractive salary
structure for patent examiners which offered
additional rewards for high-performing
examiners. A follow-up 12 month agreement
ratified in April 2010 consolidated the more
competitive salaries achieved in the previous
agreement;
■■
Go where the graduates are. Advancing
ICT capacities have made it possible for IP
Australia to locate groups of examiners in other
cities. Australia now has 35 examiners in its
new Patent Examination Centre in Melbourne,
■■
■■
Accommodate people’s life needs. IP Australia
has traditionally offered flexible employment
conditions to accommodate employees with
family or other needs outside the workplace.
In 2009–10, IP Australia was able to increase
the number of examiners who are able to work
from remote locations to a total of 24. With a
strong ICT infrastructure, the agency has been
able to accommodate their life needs, when
in past years they might have been lost to
the organisation; and
These attraction and retention initiatives have
had a positive impact on the patents inventory
and enabled approximately 3000 more patent
applications than we had targeted (27,700 against
24, 609) to be processed. This has contributed
to the clear downward trend in unprocessed
applications which is illustrated in Figure 7.3.
The number of unprocessed patent applications
now stands at 63,420 a 15.7 per cent decrease
from the peak of 75,255 applications in January
2009. This reduction is leading to improvements
in examination timeliness. Since late 2009,
the monthly average time taken to examine
an application after examination has been
requested has fallen from more than 16 months
to 12.6 months for the month of June 2010 (the
Customer Service Charter standard is 14 months).
Maintaining and developing skills. Training
patent examiners is a long-term investment
as examiners, who are typically high level
engineering, and science graduates progress
through levels of competency with the ultimate
aim of having a thorough knowledge and
understanding of patent law and practice.
Figure 7.3: Numbers of unprocessed patent applications January 2009 to June 2010
80000
No of Applications
75000
75,255
75,069
74,564
74,190
73,731
73,526
73,211
72,092
71,346
60000
70,547
69,676
69,441
69,122
68,170
66,800
65,981
65000
64,545
63,420
60000
55000
50000
Jan
09
Feb
09
Mar
09
Apr
09
May
09
Jun
09
Jul
09
Aug
09
Sep
09
Oct
09
Nov
09
Dec
09
Jan
10
Feb
10
Mar
10
Apr
10
May
10
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Jun
10
93
Part B: Report on performance
To assist with the delivery of training, IP
Australia’s Learning Centre Online, which was
rolled out during the year, has improved access
to e-learning content, which supports a variety
of delivery mechanisms for training programs.
This is particularly relevant for staff who do not
work in the Canberra office.
who examine in technologies where IP
Australia has the greatest resource gaps —
namely chemical and mechanical engineering,
chemistry and electronics. This is IP Australia’s
first substantial presence outside Canberra
for many decades and is proving itself to be a
viable, effective patent examination centre;
Figure 7.4: Trends in time taken to examine a patent, 2009–10
17.0
16.2
16.0
16.0
15.9
16.3
15.9
15.7
15.4
15.2
15.0
Months
14.2
14.0
13.7
13.2
13.0
12.6
12.0
11.0
10.0
Jul-09
Aug-09
Sep-09
Oct-09
Nov-09
Dec-09
Although the above attraction and retention
strategies are showing solid benefits, IP
Australia’s contributions to improvements in both
the domestic and international IP systems will
also contribute to improvements in examination
timeliness in the longer term.
Improving the IP system
In 2008–09, IP Australia embarked on a program
of legislative reform to improve the robustness
of Australian patents. This program, which is
discussed in more detail later in this report,
proposes adjustments to legislative timeframes
within which examination must be undertaken.
This will provide applicants with earlier indication
of patentability and others in the marketplace with
earlier certainty about where they have freedom
to operate.
Harmonisation of patent search and examination
to avoid rework
Innovators need responsive, streamlined
international IP systems to enable them to protect
their IP assets around the world, which means
it is common for patents relating to an invention
to be lodged in many different countries. While
the requirements for lodgement may differ from
country to country, significant efficiencies in
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Department of Innovation Annual Report 2009–10
Jan-10
Feb-10
Mar-10
Apr-10
May-10
Jun-10
examiner time can be derived if examiners are able
to exploit the work being done on related patents
by examiners in other countries, as far as possible.
IP agencies are increasingly entering into strategic
relationships with offices whose work is of a high
quality, and whose standards they can trust, to
assist innovators in progressing their applications
within the different jurisdictions. IP Australia
actively participates in international efforts
to harmonise patent search and examination
practices and to share work between offices.
This work is helping to build the foundations of
a more harmonised international system that
will ultimately reduce duplication and provide for
more standardised and efficient processing of IP
rights applications.
■■
Patent Prosecution Highway. In April 2009,
IP Australia renewed its Patent Prosecution
Highway pilot with the United States Patents
and Trade Marks Office (USPTO). This pilot
allows Australian and United States applicants
to fast-track their applications to the USPTO
and IP Australia, respectively. Participation in
this pilot has allowed IP Australia to be part
of discussions between the growing numbers
of countries involved in Patent Prosecution
Highway arrangements.
■■
■■
ISA and IPEA Agreements. During 2009–10,
IP Australia continued to operate as an
International Search Authority (ISA) and
International Preliminary Examination
Authority (IPEA) with both the US Patents and
Trade Marks Office and the Korean Intellectual
Property Office. These agreements are made
under the Patents Cooperation Treaty (PCT)
and offer applicants the choice of which office
to work with to achieve patent grants.
Priority Document Access Service. In
December 2009, IP Australia began
participating in the World Intellectual Property
Organization’s (WIPO) Priority Document
Access Service (DAS). DAS offers customers a
safe and simple electronic means of making
patent priority documents available to other
countries’ IP offices, via a central repository
in WIPO. Additionally, as of January 2010, IP
Australia is able to retrieve priority documents
through the DAS for international applications
filed under the PCT.
Vancouver Group. The Vancouver Group consists
of the Australian, Canadian and British IP
offices. In 2009–10, the Vancouver Group focused
its efforts on the goal of mutual recognition
of patent examination reports by member
countries. This work is underpinned by the
core principle that where possible, each of the
participating IP offices can rely on any search
and examination work or any patent granted
by another Vancouver Group. This will promote
a more transparent and consistent approach
to examination across all three offices and
assist each IP office to utilise the prior work of
the other two offices to their timely advantage.
Work is also progressing on the Vancouver
Group’s proposal to extend the DAS as a more
general mechanism for search and examination
document exchange between IP Offices.
Better ICT systems to reduce costs
and speed up service
A large percentage of IP Australia’s business
transactions — particularly those related to
patents — are still paper-based, which hampers
efficient service delivery. IP Australia staff are
also required to carry out a large amount of
scanning or re-keying of data which would not
be required if the agency were able to transact
electronically across the full range of its services.
Even more importantly, there are limitations
on the efficient use of IP Australia databases,
which constrain customers’ ability to be informed
about the progress of their applications through
the examination process, IP Australia’s ability to
monitor and respond to customer needs, and even
IP Australia’s ability to contribute to innovation
policy issues.
During 2009–10, IP Australia continued with its
major program of work to modernise IP Australia’s
customer communication channels and
standardise customer processing across different
IP rights. Once completed, this work, known as
the Integrated Customer Service Delivery (ICSD)
program will provide a broader range of electronic
options for customers.
The ICSD program will be released in stages,
progressively delivering services over the next two
years. The initial release is planned to deliver a
suite of on-line services to accommodate a variety
of high volume service request types across the
four IP rights. Further releases through 2011–12
are planned to deliver an increased number
of services. In conjunction with this major program of work,
IP Australia is implementing a number of other
ICT initiatives to support the decision making
of IP Australia staff, IP rights applicants and
the community.
■■
Website modernisation. Although IP Australia’s
website is visited by 800,000 unique visitors
each year, accessibility is limited by its
current outdated technology and navigational
complexity. In 2009–10 a web modernisation
Chapter 7: IP Australia: Outcome 1
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Part B: Report on performance
■■
project was initiated which will improve ease of
access to IP Australia’s services.
■■
INTESS international search and examination
system. Following trials with the Melbourne
Patent Examination Centre staff and outposted workers, the INTESS file management
system was rolled out to all patent examiners
in May 2010. INTESS provides improved
record-keeping and case management for the
handling of international patent files.
■■
ICT Refresh program. This program consists
of a number of ICT software and hardware
upgrades which will ensure that IP Australia’s
core business systems and their technical
infrastructure remain current.
■■
State office filing services. IP Australia made
a successful transition to using Australia Post
to provide state office filing services, which
involved a staged closure of all state offices
between August 2009 and April 2010. These
new arrangements will provide significant cost
savings in future years and absorb some of
the agency’s recent revenue decreases without
sacrificing services. The changes also enable
IP Australia to offer a conveniently located
lodgement facility in each state or territory
capital central business district (including in
Darwin for the first time).
Raising the bar on quality
A key strategic initiative for IP Australia is
to ensure that IP rights examination quality
standards are equal, if not better than, those of
our trading partners. Despite a strong reputation
for quality service delivery, further reforms have
been identified through continuous improvement
initiatives. The reforms include more robust and
transparent processes for validating the quality of
work produced by individual examiners. This will
raise IP Australia’s quality assurance system to
international best practice.
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Department of Innovation Annual Report 2009–10
In 2009–10, IP Australia established a Quality
Improvement Section. This section will provide
independent quality review of the work of each
examiner who exercises a delegation to accept
IP rights and whose decisions have the potential
to affect the future of applicants’ rights, the
marketplace and the reputation of IP Australia.
This product quality review process is linked to
the overall quality management system (which
is certified to the ISO9001 quality standard) and
includes provision of performance feedback to the
examiner, identification of relevant training and
changes to business procedures and practices.
This quality initiative will contribute to IP
Australia’s objective of improving the consistency
of its decision making and thereby enhance our
reputation both domestically and internationally to
deliver high quality, enforceable IP rights.
performance against the
PBS
In addition to these three strategic initiatives,
which will continue over some years, IP Australia
completed a number of other activities which
contributed to its outcome. Detail on these
initiatives appears after the following outcome and
program structure material.
Outcome and program structure
IP Australia has one outcome, and three subprograms that contribute to that outcome, as
shown in Table 7.1.
Outcome 1
Increased innovation, investment and trade in Australia, and by Australians overseas, through the administration
of the registrable intellectual property rights system promoting public awareness and industry engagement, and
advising government.
Sub-programs
Objectives
Intellectual property rights
1.1: IP Rights Administration and
Professional Registration
IP Australia will deliver robust IP rights and satisfy our customers in
terms of timeliness and value for money. IP Australia will be recognised
as one of the leading IP offices in the world for the quality (including
accuracy and consistency) of the IP rights we grant.
Professional registration
IP Australia will successfully undertake its functions associated with
persons wishing to qualify for registration as Patents and/or Trade
Marks Attorneys and will provide effective secretariat support to the
Professional Standards Board.
Awareness and education
1.2: Awareness, Education and
International Engagement
IP Australia will facilitate understanding of the value of and access to
the domestic and international intellectual property system among its
stakeholders in line with Australia’s interests.
International engagement
IP Australia will influence the development of effective intellectual
property systems in line with Australia’s interests.
Policy and legislation
IP Australia’s program of policy and legislative change will foster
Australian innovation by shaping the development of the IP system both
at home and abroad.
1.3: Advice to Government
IP research
IP Australia will contribute to research in intellectual property issues to
support its legislative and policy effort and its advisory boards.
Support for advisory boards
IP Australia will provide effective support to the Advisory Council on
Intellectual Property.
sub-program 1.1: IP rights
administration and
professional registration
published in the 2009–10 Portfolio Budget
Statements of the Department of Innovation,
Industry, Science and Research.
Sub-program 1.1 encompasses the administration
of patent, trade mark, design and plant breeder’s
IP rights legislation. It also includes the
administration of the Professional Standards
Board for Patent and Trade Marks Attorneys and
the Patent Attorneys Disciplinary Tribunal.
IP Australia monitors its progress towards
achieving its objectives through independent
review, benchmarking, stakeholder survey
and other feedback mechanisms. Table 7.3
summarises the organisation’s results against the
key performance indicators published in the PBS
for sub-program 1.1.
Table 7.2 summarises IP Australia’s results in
delivering Sub-program 1.1 against the targets
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Part B: Report on performance
Table 7.1: IP Australia — outcome and program structure
Table 7.2: Sub-program 1.1 — performance against deliverables, 2009–10
Deliverable
Target
Result
Receipt of patent applications
24,487
25,344
Provision of patent examination services
24,619
27,700
102,684
105,351
55,822
55,253
4,935
5,128
Provision of design examinations services
941
818
Receipt of plant breeder’s rights applications
330
354
Provision of plant breeder’s rights examination services
320
297
Receipt of Professional Standards Board applications
Provision of Professional Standards Board registration services
100
852
110
1,122
Receipt of trade mark applications
Provision of trade mark registration services
Receipt of design applications
Table 7.3: Sub-program 1.1 — performance against key performance indicators, 2009–10.
Key performance indicator
Result
Intellectual property rights
The level of customer satisfaction with the
consistency of our work.
The 2009 Service Evaluation has verified that more than
85 per cent of customers are satisfied that IP Australia is
providing a consistent level of service across the rights areas.
IP Australia’s performance in benchmarking
against quality standards (both domestic and
international).
During 2009–10, IP Australia maintained its compliance with the
IS0 9001 Quality Standard.
The level of maturity of quality assurance
systems.
IP Australia’s current quality system is being maintained and
improved with the new Quality Improvement System scheduled for
implementation in 2010–11.
Timeliness of services against service charter
standards.
In 2009–10, IP Australia achieved marked improvements in patent
timeliness against its Customer Service Charter (CSC) as a result
of a significant reduction in its patents inventory. Average patent
examination timeliness against the CSC improved from a peak in
excess of more than16 months to 12.6 months (June 2010). The
timeliness of other IP rights against the CSC consistently met or
was better than CSC targets during the financial year.
The level of work on hand for each IP right
reduced, avoidance of backlog.
The number of unprocessed patent applications now stands
at 63,420, a 15.7 per cent decrease from the peak of 75,255
applications in January 2009. IP Australia’s trade mark, designs and
plant breeder’s rights stockpiles have remained within target limits.
Professional Standards Board
Stakeholder satisfaction with secretariat
support.
Verbal feedback collected at the last meeting of 2009–10 indicated
that members of the Professional Standards Board for Patent and
Trade Mark Attorneys were very satisfied with secretariat support
during the year.
sub-program 1.2:
Awareness, Education and
International Engagement
Sub-program 1.2 encompasses IP Australia’s role
in raising awareness and educating customers
about IP and engaging with key international
stakeholders and IP bodies. IP Australia monitors
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Department of Innovation Annual Report 2009–10
its progress towards achieving the objectives of
sub-program 1.2 through independent review,
benchmarking, stakeholder survey and other
feedback mechanisms.
Table 7.4 summarises the organisation’s results
against the key performance indicators published
in the PBS for sub-program 1.2.
Key performance indicator
Result
Awareness and education
The proportion of customers that deal with us
electronically.
There has been little upward movement in the proportion of
customers who deal with us electronically (although significantly
more online transactions occur in the trade marks business line
than in patents).
IP Australia’s major program of ICT modernisation, especially the
Integrated Customer Service Delivery (ICSD) Program, should lift
the proportion significantly in coming years.
The level of use of public information services.
The number of total visitors to IP Australia’s website increased by
20 per cent in 2009–10 compared to the previous financial year.
Subscribers to IP Australia’s small and medium business
e-newsletter increased by more than 45 per cent in the
same period.
The level of use of fast-track applications and
registration options.
The number of fast-tracked trade marks applications lodged with
IP Australia increased to 2504 in 2009–10 from 2284 in 2008–09.
IP Australia’s customers lodged fewer fast tracked patent
applications in 2009–10 than in 2008–09 — 456 compared with 454.
ten of these lodgements cited green technology as the reason.
The level of customer satisfaction with
information services.
The 2009 Service Evaluation found that the trend in satisfaction
with online services is upwards with accuracy, ease of use, and
look and feel leading the upwards trend.
Attorneys reported higher levels of satisfaction compared to selffilers whose experience was moderated by the individual’s prior
knowledge or exposure to intellectual property.
Increased public awareness of intellectual
property rights.
Research indicates that 67 per cent of SMEs are either somewhat
or very aware of IP protection. This is the same percentage as in
the 2008–09 research.
International engagement
The amount of international work sharing.
Forty-one cases were considered under the Vancouver Group
Mutual Exploitation (VGME) Initiative during 2009–10. This will
increase significantly in 2010–11.
In 2009–10, 26 requests to fast-track AU applications were
received via the Patent Prosecution Highway (PPH) with the United
States Patents and Trademarks Office.
Number of international activities and
agreements.
40 overseas trips were undertaken in 2009–10, primarily to
participate in multilateral and bilateral meetings. See below for
the outcomes of this participation.
In 2009–10, IP Australia participated in the development of three
agreements with international IP offices. See below for more
information on key agreements achieved.
Number of externally funded aid projects
delivered against key target segments.
The following development cooperation projects/activities in
2009–10 were partially funded by external organisations (identified
in brackets):
■■
Intellectual Property Explorer — IPR web resource for SMEs
(APEC, the Hong Kong Intellectual Property Department, and
the Intellectual Property Office of Singapore); and
■■
Workshop on Traditional and Non-traditional Trademarks.
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Part B: Report on performance
Table 7.4: Sub-program 1.2 — performance against key performance indicators, 2009–10
Table 7.4: Sub-program 1.2 — continued
Key performance indicator
Result
The level of customer satisfaction with access to The 2009 Service Evaluation found that 79 per cent of customers
international IP system.
found the ease of access to the international IP system to be good,
very good or excellent, with 92 per cent describing the ease of
access as either the same or better when compared with earlier
experiences.
The achievement of key outcomes through
participation at key international and regional
forums.
Key agreements reached and implemented with
targeted international IP offices.
Key outcomes achieved in 2009–10 included:
■■
renewal of the mandate of the WIPO Intergovernmental
Committee on IP and Genetic Resources, Traditional
Knowledge and Folklore. The mandate renewal has started to
provide momentum to WIPO normative activities;
■■
agreement to several measures to enhance the Patent
Cooperation Treaty system. These will make the patent
system more efficient and increase the quality of
examination;
■■
agreement to a pilot project for user friendly tools for
expansion of filing languages within the Madrid system; and
■■
agreement to a coordination mechanism for the WIPO
Committee on Development and IP. This agreement
contributes to maintaining balance in WIPO as an
international IP system delivery agency and an agency
responsible for economic development, technical assistance
and capacity building.
Key agreements reached in 2009–10 included:
■■
the VGME initiative agreed in July 2009 between the
Australian, Canadian and UK IP offices, enabling exploitation
of existing search and examination reports on equivalent
applications;
■■
the 2010 European Patent Office — IP Australia Memorandum
of Understanding agreed in November 2009, setting out key
cooperation activities with one of the world’s largest patent
offices; and
■■
the 2010–11 WIPO — Australia Work Plan agreed in
November 2009, which articulates development cooperation
projects for the Asia and Pacific Region.
sub-program 1.3: Advice to
government
Under the policy and legislative objective of this
sub-program, IP Australia will provide IP policy
advice across government and internationally.
Sub-program 1.3 encompasses IP Australia’s role
in providing advice on IP matters, and supporting
research into the current and future use of IP
Rights.
Table 7.5 summarises the organisation’s results
against the key performance indicators published
in the PBS for sub-program 1.3.
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Department of Innovation Annual Report 2009–10
Key performance indicator
Result
Policy and legislation
Satisfaction of stakeholders with quality and
timeliness of advice on policy and legislation,
and ministerial correspondence, speeches
and briefings, submissions to reviews and
government responses.
IP Australia’s policy and advice is consistently delivered on time.
Less than 5 per cent of IP Australia’s ministerial contributions are
returned for re-work.
The number of ministerial briefs and responses. In 2009–10, IP Australia provided 34 pieces of ministerial
correspondence, 19 information briefs, 20 action briefs, 14
engagement briefs, 15 question time briefs and 2 meeting records
to the Minister.
IP research
The number of IP research initiatives
IP Australia conducted four strategic research projects during
2009–10. Of these strategic research initiatives, 100 per cent were
completed on time, within budget and to the anticipated standard.
IP Australia also agreed to provide $2 million over four years to
support the Intellectual Property Research Institute of Australia,
to assist in its multi-disciplinary IP research work.
Increased understanding of issues impacting
Australian business.
Through IP Australia’s biannual Business and Industry Forum,
business issues related to IP and intangible assets have been
identified, discussed and acted upon. The forum includes
representatives from the Australian Industry Group, the Australian
Chamber of Commerce and Industry, the Institute of Chartered
Accountants and the Certified Practising Accountants of Australia.
Support for Advisory Boards
Council & Board satisfaction with quality of
secretariat and research support provided.
IP Australia’s Advisory Boards indicated that they were very
satisfied with secretariat and research support during 2009–10.
The number of ACIP reviews completed.
During 2009–10, the Advisory Council on Intellectual Property
completed two reviews — the review of Post Grant Patent
Enforcement strategies and a review of the Enforcement of Plant
Breeder’s Rights.
Streamlining the examination
process through legislative
reform
In a world where the economic growth of nations is
driven increasingly by the creativity and knowledge
of its people, there is a growing awareness
that effective IP systems create incentives for
innovation. For example, recent research by
the Intellectual Property Research Institute of
Australia, estimated that the value of the patents
system to the Australian economy is in the order
of $12 billion1. In Australia, this awareness has
engendered debate about the patentability2
tests enshrined in Australian patent legislation
and whether or not these tests are of the same
standard as those in other jurisdictions.
Powering Ideas, the government’s response to
the Review of the National Innovation System
reinforced this concern by noting that “the degree
1 Jensen, P.H., Thomson, R.K. and Yong, J.S. (forthcoming).
“Estimating the patent premium: Evidence from the Australian
Inventor Survey”, Strategic Management Journal.
2 Patentability refers to whether or not an invention meets the legal
requirements to be granted a patent in a particular jurisdiction; in
Australia, an invention must meet the legal requirements of the
Patents Act 1990.
Chapter 7: IP Australia: Outcome 1
101
Part B: Report on performance
Table 7.5: Sub-program 1.3 — performance against key performance indicators, 2009–10
of inventiveness needed to obtain a patent is
lower in Australia than in other countries.” This
degree of inventiveness goes directly to the idea
of the ‘robustness’ of an IP right which can stand
its ground in the marketplace, particularly for
a country like Australia which is a net importer
of technology. Powering Ideas went on to say
“One option may be to bring Australia into line
with our trading partners and competitors by
addressing this. As well as facilitating domestic
innovation, this would simplify intellectual property
management and reduce costs for Australian firms
doing business.”
In March 2009, IP Australia embarked on an IP
rights law reform project, incorporating proposals
from the Advisory Council on Intellectual Property,
the Australian Law Reform Commission and
Powering Ideas. The reform project aims to
reduce barriers in the innovation landscape for
researchers and inventors, improve certainty
about the validity of granted patents, and allow
patent claims to be resolved faster. This will
provide applicants with an earlier indication of
patentability and others in the marketplace with
earlier certainty about where they have freedom
to operate3.
Initial consultation was completed in March 2010
and proposedlegislative changes will be
incorporated into the Intellectual Property Laws
Amendment Bill 2010 which has been added to the
government’s legislative program. If the changes
are adopted into law, the standards set for patents
granted in Australia will be better aligned with
patent standards in other jurisdictions, which will
provide greater certainty to Australian innovators
about the robustness of their Australian patents
and their ability to export their inventions. The
changes will also reduce the likelihood of granted
rights being disputed and subjected to costly and
time-consuming court proceedings. This will
benefit Australian innovators who wish to conduct
follow-on innovation involving patented technology
and who have less freedom to operate where overbroad patents are granted. Higher thresholds
3 Freedom to operate is usually used to mean determining whether
a particular action, such as testing or commercialising a product,
can be done without infringing valid intellectual property rights of
others.
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Department of Innovation Annual Report 2009–10
will also ensure that Australian consumers do not
pay more for technology in Australia than is paid
elsewhere.
Improving access to IP information
Both Powering Ideas and the Government
Response to the Report of the Government 2.0
Task Force agreed that public sector information
should be made more accessible to inform and
engage the public. Good quality information
about IP activity, which is a vital product of the IP
system, is an essential input for some of the most
critical international policy debates today. Yet IP
information stores tend to be complex, constantly
evolving, and difficult to capture in a readily
accessible form for a non-specialised audience. To address this problem, IP Australia has
significantly increased access to patent data
through AusPat, an online search facility that
provides a single point of access to all Australian
electronic patent information. AusPat continues to
deliver a wider range of functionality to customers.
During the year under report, the following
enhancements were achieved:
■■
ability to search for applications managed in
internal administration systems;
■■
increased number of search fields (21 currently
available) and the ability to view up to 200
discrete data elements for each application;
and
■■
customisable search results page and the
ability to save searches.
Other enhancements are still under development.
Within the next few months, text searchable
versions for all patent specifications since 1904 will
become available.
Enhanced engagement with
stakeholders
A strategic priority for IP Australia is to facilitate
two-way communications between the agency
and our customers to ensure that our products
and services are, and continue to be useful and
relevant. This will ensure that current and future
customers derive value from the IP system to
Two new forums were established in 2009 — the
IP Professionals Forum and the IP Forum — which
seek to engage with a broad cross-section of
the IP profession. The IP Professionals Forum
is a mechanism for IP Australia to engage
strategically with patent and trade mark attorneys,
IP lawyers and other IP interest groups. The IP
Forum provides an opportunity for the innovation
community, including business leaders, a
selection of innovative SMEs, and IP academics
and professionals, to share their views with
IP Australia. These forums met twice in 2009–10
and produced favourable responses from all
stakeholder groups.
During 2009–10, IP Australia conducted a series of
national seminars organised to educate business
about IP. The seminars were entitled ‘How to make
your brand great’ and included presentations by
a number of high profile business people. Over
650 people in total attended, with a number of
seminars (fully booked or at capacity). IP Australia
is looking to hold two of these seminars each year.
The Business and Industry Forum includes
representatives from peak bodies that represent
small and large business including the Australian
Industry group, Australian Chamber of Commerce
and Industry, Australian Manufacturers’ Patents,
Industrial Designs, Copyright and Trademark
Association, Enterprise Connect and Indigenous
Business Australia. This forum held two meetings
in 2009–10 which focused on IP services to
SMEs, including providing information about
what services IP Australia currently provides and
discussing how these services could be improved.
Improving IP education and
awareness services for
researchers and business
There are around 1.93 million actively trading
SMEs in Australia that are estimated to represent
96 per cent of all business. These businesses are
often unaware of, or lack the time to focus on,
the relevance of IP to their business or how the
successful exploitation of IP can help to improve
their competitiveness. This can result in firms
inadvertently infringing the IP rights of others and
failing to adequately protect and commercialise
their own IP.
In March 2010, Parliamentary Secretary Marles
launched a package of units of competency in IP to
the VET sector. IP Australia worked in collaboration
with Innovation and Business Skills Australia to
develop a cohort of units and skill sets for IP. These
new units aim to give VET students some basic
grounding in IP and are currently being marketed
for inclusion in Registered Training Organisation
(RTO) training packages, with 17 RTOs currently
offering the units. This initiative will go some way
to meeting the education needs of SMEs.
Peer-to-Patent Australia
In December 2009, Queensland University
of Technology (QUT), in collaboration with IP
Australia, began a six-month trial of a new
initiative called Peer-to-Patent Australia, a Web
2.0 initiative. During the trial, volunteers have
been asked to identify and rank prior art for 30 to
40 business method and ICT patent applications
which are open for public inspection. IP Australia
is endorsing and promoting the initiative, supplying
the data for applications and contributing towards
its cost. Apart from its potential to assist IP
Australia to identify prior art, this trial supports
current e-government projects which seek to
encourage citizen engagement in government
decision making.
Chapter 7: IP Australia: Outcome 1
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Part B: Report on performance
assist them meet their business objectives. The
Customer Engagement Program not only provides
us with valuable feedback about what is important
to our customers but also indicates how we
can improve our service delivery, including our
education and awareness services.
Visit to Australia by Francis Gurry,
Director-General of the world
body
In August 2009, the Director-General of WIPO,
Dr Francis Gurry made his first official visit
to Australia since his appointment in 2008.
Engagements during the visit included meetings
with relevant ministers, discussions with
government agencies, meetings with a number of
industry groups and a number of public addresses,
including a National Press Club address.
Helping the neighbours
Development cooperation is a broad strategy used
by IP Australia to improve IP systems in developing
and emerging economies that are key markets
for Australia. It is in the interests of Australian
exporters to be able to access strong IP systems
in the countries to which they export. IP Australia
contributed to improve the IP capacity of countries
by hosting five representatives from IP offices in
the region as participants in the 2010 Australian
Leadership Awards program. During the program
fellows participated in formal training courses
and undertook individual projects relevant to their
interests.
Gene Patents Inquiry
The Senate Community Affairs References
Committee has been inquiring into the impact of
granting patents over human and microbial genes
since March 2009. IP Australia appeared before the
committee on a number of occasions during the
year and has provided briefings to the committee.
The committee was due to report in September
2010 but was not able to provide a comprehensive
report.
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Department of Innovation Annual Report 2009–10
Australia/New Zealand single
economic market framework
The Prime Ministers of Australia and New
Zealand agreed in August 2009 to accelerate and
deepen efforts towards trans-Tasman regulatory
integration as part of a single economic market
agenda. IP is one of the areas identified in the
Prime Ministers’ outcomes framework. The four IP
outcomes are: a single trans-Tasman regulatory
framework for patent attorneys; one trans-Tasman
trade mark regime; one application process for
patents in both jurisdictions; and a single plant
variety right application.
A joint Australian–New Zealand steering
committee met in Canberra in March 2010 to
review working group plans. IP Australia is
currently defining the scope of this program of
work and working on next steps with its New
Zealand counterparts.
Advisory Council on Intellectual
Property
The Advisory Council on Intellectual Property
(ACIP) is an independent body appointed by the
government, which advises Minister Carr on IP
matters. Four new appointments to the council
were announced in December 2009. The new
members are: Ms Vicki Tutungi, Chief Executive
Officer of Optiscan; Dr Derek Rogers, Senior
Systems Engineer with SAAB Systems; Ms Julia
Banks, General Counsel of GlaxoSmithKline
Australia; and Professor Brian Fitzgerald,
Professor of Intellectual Property and Innovation at
Queensland University of Technology.
ACIP has submitted its reports on post-grant
patent enforcement strategies and enforcement
of Plant Breeder’s Rights to the Minister and IP
Australia is currently preparing a draft government
response to these reports.