The abolition of the Australian Innovation Patent system has finally been given a deadline, albeit with plenty of time left to get your application filed.  

We have previously reported on the passage through the Australian Parliament of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020.  The Act has now been given Royal Assent on 26 February 2020 triggering the 18 month phase out date for any new Innovation Patent filings.

The process for phasing out the Innovation patent system, will be as follows:

• The last day on which to file a new Australian Innovation Patent Application will be 25 August 2021.

• Existing innovation patents filed on or before 25 August 2021 will continue to remain in force until the end of their usual term so as not to prejudice existing rights holders.
• Divisional innovation patent applications may still be filed after 25 August 2021 as long as the parent application was filed on or before 25 August 2021.
• It will still be possible to convert a standard patent application into an innovation patent application after 25 August 2021 as long as the filing date of the standard patent application is on or before 25 August 2021.

There is still ample time for potential patent applicants to file an Australian Innovation Patent Application.

Advantages of the Innovation Patent

Some of the unique benefits of the Innovation Patent are:

• it has a shorter term of protection of 8 years which can be adequate for inventions with a shorter commercial life span;
• formalities check only to achieve grant;
• substantive examination is optional and the Innovation Patent will proceed to Grant after only a formalities check (Note: examination must be requested prior to enforcement);
• the inventiveness threshold is much lower than for Standard Patent;and
• there is no limit on the technical subject matter than can be protected (e.g. mechanical apparatus, industrial methods, software, chemical and pharmaceutical compositions etc.);
• application fee and renewal fees are substantially less than for a Standard Patent.
• remedies upon successful enforcement are the same as for a Standard  Patent
• it is technically not possible to enter national phase in Australia as an Innovation  Patent from a PCT application – but practically this is possible by filing  as a divisional application of the PCT application into Australia or as a divisional of Standard Patent application.
• it is possible to file an Innovation Patent as a Convention application in Australia claiming priority from a foreign priority application and the usual  12 months Paris Convention priority deadline applies.
• the 12 month grace period applies that excludes from the prior art base inadvertent prior disclosure of the invention.

‍Usefulness for Litigation and Enforcement

Examination of Innovation Patents typically occurs within a matter of weeks after request and a Certified and enforceable Innovation Patent can be obtained within a matter of two or three months after filing.  This can be useful when an enforceable right is needed quickly.

The lower inventiveness threshold means the innovation patent is more difficult to revoke and so can be a powerful right in infringement litigation.

It is possible to file a divisional application of a granted Innovation Patent at any time during its 8 year term and so acts as a powerful deterrent and barrier to entry for competitors.

Instead of the innovation patent, IP Australia intends to develop an SME fast track examination pathway for accelerated examination of a standard patent application, as well as other tools to assist SMEs.  However, this regime has not yet been established and so we will report on any further developments as they are released.

If you have any questions about innovation patents and how they can advantage your business or your clients business then please contact Daniel McKinley.

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