Patent Publications

Here are my recent publications on patent law – you can download a copy by clicking on the title.

The Examination Effect:  A Comparison of the Outcome of Patent Examination in the US, Europe and Australia The John Marshall Review of Intellectual Property Law, Vol. 16, No. 1 (2016). The article provides an answer to a question that, rather surprisingly, has not been addressed in the academic literature to date:  What is the practical effect of patent examination?  It does so by undertaking an empirical analysis of the examination of nearly 500 patent applications, filed in identical form, in three patent offices – the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Australian Patent Office (APO).  Surprisingly, given the commonly-expressed view that the USPTO issues many “bad” patents, we find that the quality of patents granted by the USPTO may be higher than those granted by the other two offices.

A Comparative Analysis of the Three-Step Tests in International Treaties IIC - International Review of Intellectual Property and Competition Law, Vol. 45, No. 4 (2014). This article undertakes a detailed comparison of each element of each step of the three-step test, across all implementations of the test.  It shows that each version of the test contains differences in meaning, and that these differences often have practical significance.  As a result, it provides additional support for the view that there is no such thing as the three-step test – rather, there are eight three-steps tests, each of which is uniquely different.

Patents Associated with High-Cost Drugs in Australia PLoS ONE, Vol. 8, No. 4 (2013). This paper identifies and analyses all of the patents associated with 15 of the costliest drugs in Australia over the last 20 years. We find a mean of 49 patents associated with each drug.  Three-quarters of these patents are owned by companies other than the drug’s originator.  Surprisingly, the majority of all patents are owned by companies that do not have a record of developing top-selling drugs.

Patent Oppositions in Australia: The Facts University of New South Wales Law Journal, Vol. 34, No. 1 (2011). This paper analyses the outcomes of all oppositions to Australian patent applications filed 1980-2005, to test whether the system is achieving its objectives.  The results provide a mixed picture, but overall we conclude that the Australian procedure is sub-optimal: in particular, it is not significantly more efficient than proceedings in court.

Non-overlapping Rights: A Patent MisconceptionEuropean Intellectual Property Review, Vol. 32, No. 2 (2010). This article identifies the existence, and determines the validity and consequences, of overlapping patent rights. It finds that there are various types of overlap, and that each type is legally permissible subject to certain conditions.

Duration of Patent Protection: Does One Size Fit All? Journal of Intellectual Property Law and Practice, Vol. 3, No. 6 (2008). This paper seeks to answer the question whether the duration of patent protection is within the reasonable bounds of what might be considered optimal, when account is taken of the economic theory on duration, patentees’ practices regarding renewal of their patents and the legal features of the current system.

A Comparative Analysis of the Australian Patent Office’s Examination of Biotechnology Reach-Through Patent Claims Monash University Law Review, Vol. 33, No. 1 (2007). In an earlier study we analysed how the USPTO, the EPO and the JPO assessed reach-through patent claims in biotechnology, under the requirements of ‘utility’, ‘written description’ and ‘enablement’. This study analyses how the same claims are assessed by the APO under the equivalent Australian requirements of ‘manner of manufacture and description of use’, ‘clarity, succinctness and fair basis’, and ‘full description and best method’.

Second-Tier Patent Systems: The Australian Experience European Intellectual Property Review, Vol. 28, No. 4 (2006). Australia has a relatively long history of second-tier patent protection, with first a petty patent and later an innovation patent supplementing the standard patent. This article traces the history and objectives of the second-tier patent systems, profiles the users of the two systems, and considers the extent to which they have met their objectives.

Reach-through Patent Claims in Biotechnology: An Analysis of the Examination Practices of the United States, European and Japanese Patent Offices Intellectual Property Quarterly, Vol. 3 (2005). This article conceptualises and defines a biotechnology reach-through claim. It then analyses the extent to which Trilateral Offices’ assessment of the validity of hypothetical claims with respect to each of the patent law requirements of utility (industrial applicability), written description (clarity and support of claims) and enablement (sufficiency of disclosure) filters out from grant those claims which may be properly considered to be reach-through claims.