New US patent rules have implications for Australian patent holders

After 18 months of legal challenges, the US Patent Office is closer to introducing new regulations that may have a significant impact on Australian patent holders and applicants.

Freehills IP Partner James Cherry said when the USPTO first proposed the new rules 18 months ago, there was consternation, particularly about a proposal to limit continuation applications which would have substantially affected many patent applicants, including Australian companies and researchers.

“Even though the rules limiting the number of continuation applications — which would have had the greatest negative impact on some categories of Australian patent applicants — was considered invalid, three other categories of rules may still come into force pending lower court consideration,” Cherry said. “Although they are more easily managed, they are nevertheless an important consideration for Australian companies operating in the US market.”

“Given the continuing uncertainty over what new rules may be introduced, and the timing of their implementation, the potential ramifications should be kept in mind when devising United States patent strategy, both when prosecuting existing applications and preparing applications that will enter the US in the future.

There is a groundswell of support for reform to US Patent Office procedures. The costs of US patents, particularly to Australians, have increased sharply over the last year due to other factors, and this is another potential cost. The precise nature of US patent reform however remains highly contentious — we will be monitoring further developments closely.”