www.elsevier.com/locate/worpatin

World Patent Information 29 (2007) 346–351

Increasing online accessibility at IP Australia

Ian Heath*

IP Australia, P.O. Box 200, Woden ACT 2606, Australia

Abstract

In the context of increasing usage of online services for filing, etc. at IP offices worldwide, this article describes progress at IP Australiain offering such services. A number of patent and trade mark services such as filing, and databases are available, although online filingservices for designs and plant breeder’s rights are not yet available. Particular attention is paid to the Trade Mark Assisted Filing Service,which helps customers to determine the potential registrability of a proposed mark. Further attention is paid to improvements to existingpatent searching capabilities, including details of a project to build and deliver a new search system for Australian patent data.� 2007 Elsevier Ltd. All rights reserved.

Keywords: IP Australia; Online services; Trade marks; Assisted Filing Service; Potential registrability; Trade mark registration; Databases; Patent filing

1. Introduction

Customers throughout Australia and the world have arange of online options that makes accessing intellectualproperty information and protection more convenient thanever.1

IP Australia, the agency responsible for administeringregistered intellectual property rights in Australia, hasexpanded its range of online services to allow customersto file for a range of intellectual property rights via theIP Australia website.

Its online filing options, which include the Trade MarksAssisted Filing Service and trade marks, standard, provi-sional and innovation patents and Patent CooperationTreaty (PCT) application options, have increased the rangeof services which can be accessed online.

This article provides the following overview of the ser-vices available to customers as well as the benefits theyprovide.

0172-2190/$ - see front matter � 2007 Elsevier Ltd. All rights reserved.

doi:10.1016/j.wpi.2007.05.004

* Director General of IP Australia.E-mail address: Peter.Willimott@ipaustralia.gov.au

1 Editor’s note: See for example Refs. [1,2] for description of the e-filingservices at the USPTO and the EPO, respectively.

2. Conducting business via the Online Services Facility

A range of online options for conducting business withIP Australia gives customers a choice in the way theyobtain protection of their intellectual property rights.

The Online Services Facility available via [3] is the accesspoint for customers wanting to conduct business online. Itprovides straightforward and secure systems that allowcustomers to undertake a range of actions, including lod-ging electronic applications, searching online databasesand accessing information through the online journals.

Online options available on the facility are intended tosave customers both time and money and are a critical partof today’s e-business environment, especially when manyAustralian businesses are operating both domesticallyand globally.

Increasingly IP Australia’s customers are choosing toseek protection for their intellectual property rights viathe online system, which is a good indication of its successand need. A range of upgrades and improvements imple-mented over the years are continuing to make it easier touse, for both first timers and those more experienced withthe process. IP Australia is continually reviewing its onlineservices to better meet customer’s needs. This seeks toensure that IP Australia’s services are effective, efficientand accessible globally.

I. Heath / World Patent Information 29 (2007) 346–351 347

3. Development challenges

IP Australia began developing its online service optionsfor customers in the late 1990s, when its search databaseswere made available to the public via the IP Australiawebsite.

At this time the Australian Government was working onproviding a legislative framework that focused on thedevelopment of new electronic channels to conduct busi-ness online. The Electronic Transaction Act 1999 encour-aged online business transactions in Australia by givingelectronic communication methods such as fax and emailthe same legal standing as a physical letter. With thesedevelopments, IP Australia was able to expand its onlineservices to include online applications.

The introduction of electronic communication providedan opportunity for IP Australia to streamline its processesand help customers. However, the online services that IPAustralia provides are not limited to applications, but alsoconsist of searchable databases and journals to assist cus-tomers in relation to their intellectual property matters.

The online system was developed within IP Australia toensure that the different application processes were success-fully migrated into an electronic environment and the sys-tem met IP Australia’s legal and customer service priorities.The majority of the legislation administered by IP Austra-lia has been amended to encompass the option of online fil-ing. Policies have been developed to deal with the varioustime zones occurring within Australia, as well as dealingwith issues such as interruption to an electronic transmis-sion and equipment failure.

In addition to the technical and internal issues that hadto be addressed, there was also the challenge of encourag-ing customers to use the new services. When the online sys-tem was launched customers were initially reluctant toconduct business online, because of uncertainty of whetherinformation would reach IP Australia securely. Some werealso reluctant to pay online. A high degree of security andsurety had to be built into the system to build confidencewith customers.

These issues were addressed through a range of communi-cation initiatives including the provision of a confirmationpage to let the customer know their online application hadbeen received.

To protect information, IP Australia utilises secure trans-action encryption, 128 bit SSL, and constantly reviews this asnewer technologies become available. The information isthen securely stored within the IP Australia software systemand access is restricted to authorised personnel through theuse of firewall, intrusion detection and other technologies.

To encourage more customers to file online applications,IP Australia has also reduced fees for filing trade mark andpatent applications through the online facility. For trademarks, the standard fees for an application were reducedin September 2002. This reduction was echoed in the onlinefiling applications for standard and innovation patents.The fee reduction takes into account the time saved by IP

Australia through online applications and this saving isthen passed on as savings to a customer’s application fee.

4. IP Australia’s online services

The online services available on the IP Australia websitecurrently include the filing of applications (these are cur-rently limited to certain patent and trade mark applica-tions), access to searchable databases, a fee calculatorand access to online journals.

For each IP right, the following online services areavailable:

• Patents:– Provisional, standard, innovation and international

(PCT) patent applications;– Searchable databases (see Section 5 for details); and– Online patent journal.

• Trade marks:– Trade mark applications;– Trade mark assisted filing request (see Section 4.2 for

details);– Searchable database, Australian Trade Mark On-line

Search System (ATMOSS);– Searchable online trade mark journal; and– International trade mark fee calculator.

• Designs:– Searchable database, Australian Designs Data

Searching (ADDS); and– Searchable designs online journal.

• PBR:– Searchable database;– Online plant varieties journal; and– Interactive variety description system.

The International PCT application and Trade MarkAssisted Filing Service requests are recent additions tothe online services. IP Australia has also introduced onlinefiling for provisional patents.

4.1. International PCT application filing

IP Australia provides access to filing online interna-tional applications as part of its Online Services Facility.The fee for an online PCT application can equal a reduc-tion of more than $AU300 compared to a paper applica-tion. This discount is deducted from the filing feescollected on behalf of the World Intellectual PropertyOrganization (WIPO) and reflects the savings in paperworkand processing.

Another advantage in submitting an online applicationis the speed in reaching WIPO.

While their PCT application is being processed, thecustomer is able to check and track its status via the IP

Fig. 1. Assisted Filing Service user interface.

2 Embraces both inherent suitability and existing conflicting marks.

348 I. Heath / World Patent Information 29 (2007) 346–351

Australia website for up to six months after the filingdate.

4.2. A new Trade Mark Assisted Filing Service

The Trade Mark Assisted Filing Service (AFS) waslaunched in October 2005 to help customers determine

the potential registrability2 of their trade mark prior to fil-ing an application. Fig. 1 illustrates the Assisted Filing Ser-vice user interface.

I. Heath / World Patent Information 29 (2007) 346–351 349

The aim of this service is to ensure a smooth process fortrade mark applications. It can also save applicants timeand money on applications that may be unsuitable fortrade mark registration.

The AFS was established after research in 2002 discov-ered self-filers had a high interest in greater assistance fromIP Australia early in the process. The service currentlyreceives on average 380 requests a month, which is approx-imately 11% of locally filed applications. The number ofrequests is expected to increase as awareness of the serviceincreases. The majority (67.5%) of these applicants are firsttime filers, but the remaining had filed at least one standardtrade mark application in the past.

The range of customers using the AFS varies, with thehighest percentage from the property and business sectors,followed by manufacturing and retail.

Those using the service are guaranteed direct contact viatelephone with an IP Australia officer within five workingdays of their initial request for assessment. This requestcan only be lodged online. The officer will discuss theresults of the request and the applicant can also requestan official report as confirmation.

The results are neither legal nor business orientated anddeal only with the registrability of the proposed mark. Theresults given by officers remain valid only for a further fivedays, due to constant changes to the Trade MarksRegister.

The standard fee for the service is $AU90 for each classthe trade mark relates to and, to further assist first time fil-ers, the online request form includes a goods and servicespick-list to help customers select these classes.

The form also calculates the fees to be paid by thecustomer as a result of the information they haveentered.

If a customer would like to proceed with a trade markapplication, following a positive assessment, they will needto pay an additional fee of $AU90 per class.

While the AFS serves to streamline the initial filing pro-cess, both an AFS and standard trade mark applicationwill take the same amount of time to reach the point ofregistration.

Recent research has shown more than 80% of users arehighly satisfied with the AFS. Nine out of 10 consider theservice value for money and would use it again in thefuture, as well as recommend it to others.

5. Improving patent searching capabilities

In Australia, there is a legislative requirement for theCommissioner of Patents to make prescribed documenta-tion available to the public. This includes the Registerand all documents ‘‘. . . filed in connection with the registra-tion of prescribed particulars . . .’’ The Patents Act (1990)requires that these be available for viewing at IP Australiaduring hours that it is open for business.

This minimal requirement does not meet the expecta-tions or demands of increasingly sophisticated users.

Customers want online access to patent information at atime and location convenient to them. They also hold veryclear expectations on how they will search. Ubiquitous toolslike Google have set a standard for how information isfound on the internet and the public offerings of other Pat-ent Offices have set a benchmark for online patent searching.

IP Australia’s new patent search system will provideinternet based access to a growing proportion of theOffice’s information.

5.1. Current state

At present IP Australia provides access to Australianpatent data through the following discrete and uncon-nected sources:

PatAdmin

Contains bibliographic data for patentapplications filed in Australia betweenJanuary 1979 and 5 July 2002. In somecases, details of patents filed beforeJanuary 1979 are also available.

PatIndex

Contains Australian patent applicationsand patents contained within PatAdminlinked to one or more InternationalPatent Classification marks.

Patsearch

Contains bibliographic informationabout innovation patent applicationsfiled from 24 May 2001 and all newstandard, provisional and innovationpatent applications filed from 5 July2002. Patsearch also containsinformation about PCT applicationsfiled between August 2002 to 31December 2003 which designatedAustralia but had not yet entered theNational Phase.

APPS

Abstracts of all published Australianpatent applications filed since 1 January1975. Also includes limitedbibliographic data for Australianapplications between 1920 and 1975.

AU patentspecifications

Provides access to published patentapplications. Covers non-convention,non-PCT applications from 1975. AU-A (application as filed prior toexamination) and AU-B (application asaccepted) are available from 17December 1998.

Each system is different; each has its own user inter-face, its own set of searchable fields and delivers informa-tion in a different format. It is not currently possible toconduct one search across the contents of these differentsystems.

Requests have been made for a user friendly systemthat performs a single search across the contents of both

Fig. 2. New patent search interface: typical hit display.

3 Editor’s note: Such open patent services in general are described in anarticle by Kallas [4].

350 I. Heath / World Patent Information 29 (2007) 346–351

the Patsearch and PatAdmin databases. Additionally,requests have called for the ability to link directly to spec-ifications and for online access to all Australian patentspecifications.

5.2. What is IP Australia doing about it?

IP Australia undertook a major program of work in2006 to specify, build and deliver a new search system forAustralian patent data. The new patent search interfaceis shown in Fig. 2. The program is large and has been splitinto a number of stages:

Stage I – 2006: Requirements gathering and specifica-tion of system.Stage II – 2007: Develop a single internet-based searchinterface to all Australian patents since 1979 which willprovide users with:

• The ability to search on 20 different fields (Title,Inventor, Applicant Name, Application number(including Australian application number, Provi-sional number, Serial number, PCT and WIPO num-bers), Application status, Application type, Prioritynumber, Priority date, Priority country, IPC mark,

Filing date, Publication date, Acceptance date, NPEdate, Expiry date, Continuation/Renewal date, Seal-ing date, Agent name, Related applications, andUnder opposition);

• Access to potentially 156 unique data elements oneach patent;

• Three different ways to search depending on thesophistication of the user and their search require-ments. A new ‘Advanced search’ will allow complexBoolean expressions to be constructed using astraight forward query language;

• Proximity searching; and• Sophisticated date range searching.

In addition the project will deliver bulk data with regu-lar updates to fee-paying subscribers.3

2007 also sees the commencement of a long term projectto scan and produce full-text searchable editions of all Aus-tralian patent specifications, working backwards to 1904.This automated process will use optical character recogni-

I. Heath / World Patent Information 29 (2007) 346–351 351

tion technology to process patent applications from thebest available archive in paper, roll film or microficheformats.

Stage III – 2008: Extend access to Australian patentinformation including:

• e-Register – Search, browse and print information fromthe Australian Patent Register;

• e-Journal – Search, browse and print information fromAustralian Journals;

• Full text searching of Australian patents initially from1979 (and eventually for all patents) from the sameinternet search facility delivered in Stage II; and

• Extend capacity of bulk patent export facility to includepublished specifications.

Longer term, IP Australia will offer an e-Case facilitythat will provide public access to case files.

IP Australia has a strong commitment to providingworld-class access to Australian patent data and will con-tinue to monitor the program’s success.

6. The possibilities

The AFS and PCT are examples of some of the newdevelopments that have recently occurred to meet cus-tomer requirements. IP Australia’s aim is for the OnlineService area to become a one-stop facility for customer’sonline business transactions. To meet this aim, the capa-bilities of the Online Services Facility are expected toexpand and be refined to better meet identified customerrequirements. Ongoing customer consultation is con-ducted to assist IP Australia in determining the priorityof new developments.

There are more potential additions to IP Australia’sonline application services to expand, as electronic filingof applications for designs and plant breeder’s rights havenot yet been made available.

IP Australia is continually reviewing the existing appli-cations, both technically and functionally, and is consider-

ing the development of ‘smart’ features to assist users infiling their applications. These include enhanced decisionsupport tools and user friendly data validation to guidecustomers through the application process. Some of thiswork has been implemented in the trade marks onlineapplication process which is broken up step-by-step.Throughout the process questions are asked, guiding thecustomer and to ensure the information captured as partof the process is as comprehensive as possible.

7. Further information

More information about IP Australia’s online services isavailable at [3] or [5].

References

[1] Morris C. TEAS: electronic filing of trademark applications at the

USPTO. World Patent Inform 2001;23 (1):45–50.

[2] Rogier V, Lanier M. Epoline� electronic Online Filing (eOLF). World

Patent Inform 2002;24 (4):277–80.

[3] www.ipaustralia.gov.au.

[4] Kallas P. Open patent services. World Patent Inform 2006;28

(4):296–304.

[5] https://pericles.ipaustralia.gov.au/ols/ecentre/content/olsHome.jsp.

Dr. Ian Heath is the current Director General ofIP Australia, a position held since July 1999. AsDirector General he has led the organisation todevelop improved approaches to customer serviceand embark on redevelopment of IT systems. Hehas taken a special interest in some key policyareas including international approaches to theprotection of traditional knowledge and thedomestic development of approaches to patentingin sensitive areas such as gene technology andbusiness methods.

He was previously First Assistant Secretary, IT Group, Department ofHealth and Family Services. Prior to this he was the manager of the

Victorian State Office of the Department of Health and Family Services.He has also worked at senior levels in immigration and indigenous affairs.He has academic qualifications in history, law and education.