In earlier articles I have looked at data on Australian patent filings and grants, as well as associated attorney firm performance. While these numbers give us a good picture of application activity in Australia, they provide no information on the filing activities of Australian applicants in other jurisdictions. Many innovators that are ultimately interested in securing patent protection in multiple countries choose to do so by first filing an international application (IA) under the Patent Cooperation Treaty (PCT). In this article, therefore, I examine some recent PCT filing data for applicants, and patent attorney firms, resident in Australia and New Zealand.
As most readers will be aware, the PCT is an international treaty administered by the World Intellectual Property Organization (WIPO) that enables residents of any member country (of which there are currently 153, illustrated by the map at the top of this article) to file a single IA that has the effect of establishing a corresponding filing date in all of those countries, and associated regional patent systems. While the PCT system is sometimes presented as a mechanism for improving efficiency and/or saving money, whether or not it achieves such benefits depends very much on each individual case, and the extent to which its centralised search, ‘preliminary examination’, and amendment processes enable subsequent national applications to be streamlined. In practice, it remains necessary to file further applications in all countries of interest within 30 (or, for some countries, 31) months of the initial priority date, which must then each be examined under the corresponding national patent laws and procedures before any patent is actually granted. All else being equal, therefore, a PCT application represents an additional cost, incurred prior to the various national costs, and may delay the examination and grant of national patents by up to two and a half years.
Despite this, the PCT system is popular with many Australian and New Zealand applicants. In 2018, for example, Australian residents were named as applicants on over 1,700 IA’s, which compares favourably with the 2,756 domestic standard patent applications filed by Australian applicants in that same year. The reason for this popularity is clear – even though it represents an additional cost, an IA defers a final decision on the jurisdictions in which patents will be pursued, along with the substantial further costs of filing and examination in multiple national and/or regional patent offices, for up to an additional 18 months.
This benefit of the international application system is clearly reflected in the most enthusiastic users of the system. Of the top 20 Australian and New Zealand applicants named in PCT applications published over the three years between the beginning of 2017 and the end of 2019, 14 are universities or other public research institutions. Of the remaining six, three are medical device manufacturers. All of these are organisations that can particularly benefit for the deferral of further filing decisions and costs that the PCT system provides.
The data presented in this article is derived from WIPO’s PatentScope online search system, which enables (among many other things) PCT applications to be identified by applicant country-of-residence, and supports download of up to 10,000 records of basic bibliographic data in Excel format at one time. Using this facility, I built a database of just over 42,000 PCT applications having one or more Australian and/or New Zealand applicants, published between 2002 and 2019 (inclusive). I then used the IPGOD 2019 dataset as a basis to identify and match applicant names (accounting for variations, typographical differences and errors, and changes of name). The names identified below are those used most recently in PCT filings by the respective organisations.
I also matched, as far as possible, agents responsible for PCT filings to operating Australian and New Zealand patent attorneys and firms. This task was complicated by the fact that the PCT system (unlike IP Australia) permits multiple agents to be named on each application, as well as the ongoing practice of some firms to name one or more individual attorneys as agents, rather than the firm itself. As a last resort in such cases, I attempted to identify firms from agent names using the official register maintained by the Trans-Tasman IP Attorneys Board (TTIPAB). This approach is necessarily imperfect, since human names (especially when sometimes expressed only as surname plus first initial) are not unique, and attorneys can change employers such that the firm they currently work for might not be the firm they worked for when a particular PCT application was filed. Even so, I believe that the agent matching process has been largely successful, especially in the case of more recent filings.
Top PCT Applicants
The table below lists the top 20 Australian and New Zealand applicants, as named on IA’s published between 2017 and 2019.
|1||COMMONWEALTH SCIENTIFIC & INDUSTRIAL RESEARCH ORGANISATION||144|
|3||FISHER & PAYKEL HEALTHCARE LTD||98|
|5||NEWSOUTH INNOVATIONS PTY LTD||76|
|6||UNIVERSITY OF SYDNEY||75|
|7||UNIVERSITY OF QUEENSLAND||67|
|8||RESMED PTY LTD||53|
|9||UNIVERSITY OF MELBOURNE||50|
|10||AUCKLAND UNISERVICES LTD||50|
|12||CCL SECURE PTY LTD||29|
|13||BREVILLE PTY LTD||28|
|14||UNIVERSITY OF SOUTH AUSTRALIA||27|
|15||AUSTRALIAN NATIONAL UNIVERSITY||27|
|16||VICTORIA LINK LTD||25|
|17||COUNCIL OF THE QUEENSLAND INSTITUTE OF MEDICAL RESEARCH||25|
|18||WEIR MINERALS AUSTRALIA LTD||24|
|19||UNIVERSITY OF ADELAIDE||22|
|20||ROYAL MELBOURNE INSTITUTE OF TECHNOLOGY||22|
As I have already noted, the top 20 applicants include 14 universities and public research institutions (or their technology transfer arms, i.e. NewSouth Innovations and Victoria Link), and just six private-sector companies. The top three private-sector applicants, Cochlear, Fisher & Paykel Healthcare, and Resmed, are all medical device makers. Of the remaining three, CCL Secure (formerly known as Securency) is a supplier of plastic banknote technology, Breville makes kitchen appliances (including some excellent domestic espresso machines), and Weir Minerals is a member of the global Weir Group that supplies services and equipment to the mining industry.
By comparison, 10 of the top 20 applicants for Australian standard patents in 2019 were universities and public research institutions. Breville and CCL Secure also appeared on that list. Notably, however, none of the three medical device makers were among the top applicants for Australian patents, and the number one domestic Australian patent applicant, Aristocrat Technologies, was named on only three PCT publications between 2017 and 2019, falling far short of the top 20.
It seems safe to conclude, then, that the PCT system is relatively more popular with universities, research institutions, and medical device makers than it is with applicants in many other industries. The reason for this is likely tied to the commercialisation strategies employed by these types of organisations. The objective of public research providers is commonly to translate technology resulting from their research into outcomes for public and/or commercial benefit. There are a number of models by which this may be achieved, including licensing, joint ventures, and/or the establishment of spin-off companies. However, it is rarely clear at the time when a patent application is initially filed which of the possible models may be adopted, who any potential private sector partners could be, or which international markets are likely to be of most interest or value. The PCT system, which enables associated patenting decisions to be deferred by up to two-and-a-half years, provides the time needed to evaluate the technology, and pursue a range of potential opportunities.
Medical device makers may face similar uncertainties in determining, at an early stage following development of a new innovation, whether the technology will have commercial value and, if so, in which markets. It may take time to establish the efficacy of a new product or enhancement, and it might be necessary to obtain regulatory approval to market the technology in various countries. Again, the PCT system enables patenting decisions to be deferred while opportunities are evaluated. Similar uncertainties around regulatory acceptance and value in relation to the adoption of security features in legal tender may also motivate CCL Secure to use the PCT system to keep its options open for as long as possible
Top PCT Agents
The following table lists the top 20 patent attorney firms identified as agents on PCT applications published between 2017 and 2019.
|Rank||Attorney Firm||PCT Publications|
|1||SPRUSON & FERGUSON||533|
|2||DAVIES COLLISON CAVE||462|
|5||PHILLIPS ORMONDE FITZPATRICK||258|
|6||A J PARK||240|
|7||FPA PATENT ATTORNEYS||218|
|12||PATENTEC PATENT ATTORNEYS||111|
|14||JAMES & WELLS||99|
|16||CATALYST INTELLECTUAL PROPERTY||70|
|17||MICHAEL BUCK IP||67|
|19||ALLENS PATENT & TRADE MARK ATTORNEYS||60|
Broadly speaking, the top firms for PCT filings are the same ones that rank highly on Australian patent filings. Larger firms with more clients, and more Australian filings, inevitably have greater opportunities to serve their clients in relation to PCT filings. Notable differences in the top 10 are the appearance of New Zealand-based A J Park on the above list, and the absence of Pizzeys (which ranked sixth in total Australian filings in 2019). It is clear (and unsurprising) that A J Park conducts more international (and, presumably, New Zealand) filing work on behalf of its New Zealand clients than it does Australian filing work. As a firm, Pizzeys focusses more on providing Australian patent procurement services to foreign applicants, and lacks the domestic client base that would result in substantial numbers of PCT filings.
Of 8,446 IA’s published between 2017 and 2019 naming one or more Australian and/or New Zealand applicants, 522 were ‘self-filed’ (i.e. one or more of the applicants was identified as the ‘common agent’). There were 297 distinct self-filers, of which 136 were private individuals, and 161 were bodies corporate.
This shows quite a different pattern from self-filing behaviour in respect of Australian applications, where up to a third of all provisional applications, and a significant proportion of innovation patents, are self-filed, with the majority of self-filers being private individuals, and only a very small proportion of such applications ever resulting in granted patent rights.
Self-filing of an IA is often a very different proposition. An initial priority application (typically an Australian provisional application) will usually have been prepared and filed with the assistance of an attorney. Assuming that this was done properly, and if there are no additional developments to be incorporated into the IA, it is a relatively straightforward matter for an applicant to complete their own filing of the same patent specification via WIPO online, particularly if they have in-house IP counsel. As a result – and in contrast to most applicants that self-file Australian provisional applications – PCT self-filers may be among the most, rather than least, sophisticated users of the system. Indeed, a number of the organisations that appear in the top 20 list above self-filed one or more of their IA’s that were published between 2017 and 2019.
The main advantage of self-filing is presumably a cost saving. A potential disadvantage is that the applicant is then responsible for managing the PCT process, and meeting relevant deadlines, for themselves – attorney firms generally have IT systems and processes in place to ensure that steps are not missed or forgotten that may result in a loss of rights.
PCT Filings Over Time
The chart below shows the total numbers of IA’s published each year from 2002 to 2019 naming, respectively, at least one Australian or New Zealand applicant (any publication that names one or more of each is counted in both groups).
There is a variable delay between filing and publication, since the publication date is 18 months from the initial priority date, which could be any time up to 12 months prior to the filing date of the IA. The chart below, showing the annual numbers of filings, thus provides a better indication of filing activity, although the results for 2019 in particular (and, to a much lesser extent, 2018) under-report filings, since they do not include IA’s that are yet to be published.
There was a clear decline in PCT filings by both Australian and New Zealand applicants – by around 20% – between 2008 and 2011. Filings by Australian applicants also dipped noticeably in 2013, although this is most likely an artefact of a short-term change in filing strategies induced by commencement of the Raising the Bar patent law reforms in Australia. There appears to have been some recovery in PCT filings by Australian applicants since 2015, although there is no sign of a similar recovery in New Zealand, and neither country shows any sign of returning to the activity of the mid-2000’s any time soon.
Finally, the following chart shows the proportions of IA’s filed by Australian and New Zealand applicants (combined) that claim priority from an earlier application. It is clear that hardly anybody files a PCT application in the first instance – around 97% of all IA’s claim earlier priority.
Conclusion – PCT System ‘Horses for Courses’
Filing data shows that Australian and New Zealand innovators make significant use of the PCT system, with the number of IA’s filed by Australian residents each year being around two-thirds of the corresponding number of domestic standard patent applications. Of course, many of these national applications are themselves derived from earlier IA’s – in 2019, of 2,658 Australian standard applications filed by domestic applicants, 1,205 (45%) were national phase filings of IA’s.
The PCT system is most beneficial for applicants that wish to defer the costs and/or strategic decisions associated with national or regional patent filings across multiple jurisdictions. Consequently, the heaviest users of the system across Australia and New Zealand are universities, research institutions, and companies operating in highly regulated markets (e.g. medical devices and the production of legal tender).
Not all innovators will benefit from the PCT system, however. Filing an IA involves costs and procedures that are additional to, rather than a replacement of, national and/or regional application and examination processes. For companies with a relatively small number of established markets, and reasonable certainty around product development and marketing timelines, it may make more sense to bypass the international phase, and simply file directly in those jurisdictions where protection is desired. As a result, there are some very active users of national patent systems that make little use of the PCT system.
It is therefore worth keeping in mind that, while the PCT system can be very useful for some applicants, there is no ‘one size fits all’ filing strategy.