Global patent tests would cut IP costs

Patent examinations should be standardised across the world to make appropriate intellectual property protection more affordable.

This was one of the issues raised at the Federal Court Judges Intellectual Property Forum held in Sydney last month, which attracted about 20 IP judges as well as local and international speakers.

Forum convener and head of Blake Dawson Waldron's IP group, Ian Pascarl, said the event examined legal developments overseas, then applied them back to the Australian experience.

Pascarl said one of the most important issues discussed was that of global patenting, with a recent Geneva conference raising the prospect of a standard European Union patent process - subject to agreement on which language would be used.

He said the creation of standard global, or more realistically, regional patent examinations would dramatically reduce the cost of filings if, for example, a Japanese patent was recognised within Australia.

"If you can be satisfied a particular country has a high level of patent examination, then why not endorse the granting of that patent in Australia and make it automatic subject to the right of appeal?" Pascarl said.

"This would of course enable patent applicants to achieve cost savings in their patent filings."

He said this would be particularly beneficial to research institutes and universities, which were largely constrained by limited resources.

Pascarl said such institutes were often backed into a corner and were "a little bit raped along the way" in the process of trying to protect their IP without the benefit of adequate funding.

"Patenting is an expensive exercise so the university itself won't want to go ahead and pay the costs of patenting (in overseas markets) and the licensing company or spin-off won't be particularly interested doing a deal with the university unless it holds the patent rights," he said.

"So universities are forced to enter into arrangements where they usually come off second-best."

Pascarl said that if a research group licenses off a potential product at too early a stage, they would receive very little in return because much of the costly development work remained to be done.

"If they were able to license it after having done clinical trials themselves, they would be able to ask a small fortune for it."

He said that, depending on the product and its stage of development, the optimum course for an institute to take would be to form a research or funding alliance with a large partner to develop the project to a stage at which licensing or sale returns would be significant.

Pascarl said other IP problems facing universities and research institutes because of a lack of resources included an inability to set up incubators and spin-offs, as well as inadequate patent portfolio management.