Australian Innovation Patents

Australian utility model patents are uniquely termed “innovation patents.” While an Australian innovation patent is considered a second tier Australian patent because of the lower threshold of patentability required for certification, it can be used as a powerful tool in patent litigation. The advantages and disadvantages of an innovation patent when compared with a standard patent are as follows.

Innovation Patent Filing Requirements

If an Australian innovation patent application is filed within 12 months of a foreign patent filing in a country that is a member of the Paris Convention, the patent can claim the filing date of the particular foreign patent.

Minimum innovation patent filing requirements:

• A copy of the patent specification, claims, drawings (if applicable), abstract and title;
• If the patent specification is not in English, a verified English translation is required;
• Patent applicant’s name and address;
• Inventor name; and
• The details of basic patent application (patent application number, country, patent filing date), if convention priority is to be claimed by the innovation patent application.

IP Australia may also request for grant of an innovation patent in Australia:

• Before acceptance, a certified copy of the basic patent application must be filed
• If requested by IP Australia, a verified English translation of the basic patent application
• Notice of Entitlement which can be prepared and signed by an Australian Patent Attorney

Not required for Australian innovation patents:

• Power of Attorney
• Declarations signed by the inventor(s)
• Any other form that needs to be executed by the patent applicant or inventor

Benefits of Australian innovation patents compared with standard Australian patents

Despite being a second tier patent, Australian innovation patents offer several advantages over standard patents. The benefits of an innovation patent include

Fast processing to patent grant

Grant of an Australian innovation patent is often achieved in less than 8 weeks. This is because innovation patent applications are not subject to a pre-grant substantive patent examination (they are however subjected to a formalities examination).

Lower patentability requirements

The requirements for grant of an innovation patent filing to be granted are more easily met than for a standard patent. Specifically, the claims of innovation patents do not require an inventive step over the prior art. In place of this requirement is the requirement that innovation patent claims include an innovative step, although this requirement is readily met by the innovation in question making a substantial contribution to the working of the product or process. Since obviousness is not a legitimate argument for invalidity, innovation patents are difficult to invalidate.

Innovation patents as a patent litigation tool

Since innovation patents are relatively fast to obtain and difficult to invalidate, they are an ideal vehicle for Australia patent litigation.

Patent protection for incremental enhancements to products and processes

As innovation patents are subject to a lower threshold for patentability, they are particularly useful in protecting progressive enhancements to products and processes that may be obvious and therefore cannot be protected by a standard patent.

Disadvantages of Innovation patents compared to standard Australian patents

• Innovation patents have a patent term of only 8 years
• Innovation patents are limited to 5 patent claims (although all claims may be independent claims).