The South Australian Productivity Commission has released an issues paper on Health and Medical Research and Development as part of an inquiry into its impacts on the state’s economy.
Many of our clients are heavily focused on research and development, and we play a role in protecting their interests in South Australia, nationally and overseas.
At the Productivity Commission’s request, Madderns provided assistance on the intellectual property aspects of the inquiry. The discussions related to the trends in research and development and the factors that influence the extent to which it contributes to long term productivity gains and economic growth in South Australia.
The commission has released an issues paper and submissions and responses have now closed. The SAPC is due to publish its draft report shortly.
The staff at Madderns who donated blood as part of the Legal Services Blood Challenge in 2020 deserve a pat on the back, after the firm finished second for having the highest number of donors in South Australia.
A team of 10 from Madderns donated blood as part of the Australian Red Cross Lifeblood drive, including two new donors in 2020. Many others supported the team.
Nationally, 983 donations were made during the challenge, saving up to 2,949 lives. Without ambassadors such as Madderns, seriously ill patients would miss out on the life-saving blood treatments they need.
While the Legal Services Challenge has finished for the year, the Red Cross still needs help to encourage anyone who is feeling well to come forward and donate blood, with thousands of donors needed over the coming weeks to prevent a shortage. Each donation can save up to three lives.
Madderns will be looking forward to continuing its long association with the Commonwealth Scientific and Industrial Research Organisation (CSIRO), after being appointed to the panel of preferred providers of intellectual property (IP) services.
CSIRO was founded in 1916 as the Advisory Council of Science and Industry. Since then, it has undergone several iterations to become the federally-funded CSIRO. The highly-respected organisation has advanced Australia with a range of inventions and innovations that have also had a significant positive impact on the lives of people worldwide. Some of their inventions include household products and technologies that have become an intrinsic part of our daily lives, such as plastic banknotes and WiFi – yes, we can thank CSIRO for it – and even Aerogard® and Softly®.
CSIRO’s research interests are very broad and Madderns’ appointment to the panel of preferred IP service providers requires the firm to provide services in areas including biological sciences such as biotechnology, genomics and vaccines; chemistry and chemical engineering; electronics and ICT; mechanical engineering; physics; and trade marks.
The appointment recognises that the Madderns team has the technical knowledge, expertise and experience to work with the nation’s top scientists and researchers to protect their IP.
Madderns Patent and Trade Mark Attorneys has been rewarded with a prominent ranking for Patent Prosecution in the IP Stars Patent Firm 2020 survey results, announced this week by Managing Intellectual Property (MIP) journal.
The ranking firmly cements Madderns in the Top 10 Australian Patent and Trade Mark Attorney firms. The Patent Prosecution ranking adds to Madderns’ highly commendable ranking for Trade Mark Prosecution, announced earlier this year. This recognition reflects the hard work put in by the Madderns team to serve our clients in Australia and overseas during challenging times.
MIP’s IP Stars is the leading international specialist guide to IP firms and practitioners worldwide. To determine the world’s leading IP firms and practitioners, MIP obtains information from thousands of firms, individual practitioners and their clients through interviews, emails and online surveys. IP Stars covers contentious and non-contentious IP work. The research is conducted by an experienced team of research analysts in offices in Hong Kong, London and New York.
Does your company employ US residents, and do those employees or contractors sometimes invent while they are living or working in the United States? Then take note.
Did you know that any United States (US) Patent naming that person as an inventor may be liable to be invalidated – just because a Foreign Filing Licence had not been obtained from the US Patent and Trademark Office (USPTO) prior to filing in another country?
Whether you were aware of the regulations or not, the USPTO administratively examines every US patent provisional and non-provisional (complete) application to determine if the subject matter is of importance to the security of the US. The details in the patent application could include anything from a method of making a deadly virus, the method of providing unbreakable digital security or the parts and method to make a nuclear explosive.
If someone were to apply for a patent for such methods or devices, the US Government would want to know sooner rather than later. And it’s more than just a concern for the US Government; most countries have a patent application vetting process. If the idea in a patent requires classification as a secret (so it does not become published), it is within the powers provided by the respective patents Act to prohibit the publication of that patent and prevent the grant of a patent until the patent subject matter is no longer considered a secret. (Refer to an earlier article I wrote on this subject here)
For that reason and others, the USPTO reviews every patent application filed in the US. In most cases, the patent application will proceed into the USPTO system and will have a licence to do so. If you look carefully at the patent filing receipt which is issued by the USPTO, you will note the explicit mention of a Filing Licence. Without even touching on the US resident issue or discussing inventions ‘made’ in the US, you can already see that all patent applications create much more activity than many people would have ever thought necessary.
Why you must file with the USPTO
The US Government has declared it essential for an American resident (or anyone located in the US) inventing while in the US, to file for a licence before they have filed for their invention overseas (a non-US application). Note that this only applies if the US resident or other person was in the US when they conceived and put the invention into practice, which is not just the making of a prototype but potentially includes the drafting of information that ends up in the patent specification assuming the invention has not been reduced to practice.
How does that affect Australian companies?
You might be wondering how that affects a company based in Australia, and what that might mean for you. In Australia, it is common to file an Australian provisional patent application and within 12 months file a PCT application, which within 30 months of the provisional filing enters into the US as a national phase patent application. The US foreign filing licence law also affects Australian companies if they file by other patent filing routes, and subsequently file a US patent application.
If there is no foreign filing licence and one of the inventors is a US resident and they invented (or made the invention) while in the US, there must be an application to the USPTO for what is termed in this case a Retroactive Foreign Filing License under 37 CFR § 5.25. This retroactive license empowers the USPTO to authorise those patent applications which were inadvertently filed overseas before the US application was filed. This is assuming you did not know you had a duty to request the Foreign Filing Licence before you filed the Australian provisional.
US residents who invent and what that means for your business
As mentioned, it is not uncommon for a patent application in the US to eventually become granted, naming that US resident who invented while in the US as an inventor (and it does not matter what level of inventorship was involved). If there is no Foreign Filing License issued by the USPTO, the Granted patent will be declared invalid as soon as the patent is challenged. No ifs, No buts – INVALID.
Another critical point is that the US law relates to the concept of an invention ‘made’ in the US. This means that anyone who is in the US and invents, automatically triggers the need to obtain a Foreign Filing Licence or a Retroactive Foreign Filing Licence.
Foreign inventors studying or working in the US
A resident of another country attending a university in the US is a great example of how the Foreign Filing License laws play out. Although they arenot a US resident, any invention conceived or developed in the US will need a Foreign Filing Licence, and they’ll need it before they file in their own country.
Another scenario of concern is when an Australian resident visiting the US to work temporarily conceives or develops the invention while in the US and then returns to Australia. Any intention to file for a patent for the invention ‘made’ in the US will trigger the need to obtain a Foreign Filing Licence, again technically before filing in their country of choice.
What should you do if you already have a US patent pending or Granted?
To deal with the US resident issue:
Consult with your inventor/s and find out if they are a US resident and whether they were living or working in the US when the invention was created or prototyped. If so, check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.
To deal with the non-US resident issue:
Consult with your staff and find out which country they were in when they conceived and brought into practice or created a prototype of the idea that has become the subject of a patent (in any country, but more importantly the US). If ‘made’ in the US, then check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.
If you are just venturing into the patent realm and you are employing, or plan to employ a US resident, or your firm contracts a US resident to invent who also happens to be working in the US for you, then keep this sobering issue in mind. If any of your staff are intending to travel to the US and intend to invent while there, you also need to ensure this is a consideration. If your patent attorney does not raise the issue, you need to.
If a foreign filing licence is not in place and it should be, you need to act quickly. You must present your case with complete honesty and candour to the USPTO to seek and obtain a Retroactive Foreign Filing Licence – that step may save your patent and your job.