Based on our investigation into the recent court and IP Australia decisions on patentability of four Aristocrat software innovation patents, we present three actionable steps in this article for patent attorneys and innovators to reduce subject matter objection risk for software patents from the outset. This article also gives an example of a certified software innovation patent without the subject matter objection raised during certification.
Innovation patent application
An Innovation patent is a second tier form of patent protection in Australia primarily developed for use in protecting incremental innovation. However, innovation patents have now become a useful and strategic litigation tool.
Benefits of innovation patent applications
There are three main benefits to filing an innovation patent application:
- It is relatively inexpensive,
- It is granted quickly, and
- It is relatively difficult for a third party to have it revoked.
Two disadvantages of the innovation patent system are that innovation patents only last for 8 years and that innovation patent applications may not include more than five claims.
Can I get an innovation patent on my product?
Yes – if your product has a feature that is new when compared with the prior art. That new feature can be obvious but must make a difference to the functionality of the product. The prior art includes all patents and published patent applications worldwide, as well as all other publicly available information.
What is the process for obtaining and enforcing an Australian innovation patent?
The following section outlines the Australian innovation patent process.
Once filed, an innovation patent application will pass through a formalities examination. Your patent attorney will receive notification of grant or a formalities report within three months of filing the innovation patent application.
To obtain an enforceable innovation patent right, a Request for Certification of the granted innovation patent application must be filed with IP Australia – this can be done at any time after the innovation patent has been granted. IP Australia will then conduct a substantive examination of the Innovation Patent to determine whether the Innovation Patent is new and includes an innovative step over the prior art. Anyone (not only the owner of the Innovation Patent) can request certification of the innovation patent at any time during the term of grant.
If the innovation patent application is successful during examination, it will be certified. A certified Innovation Patent can be used to stop infringement of the innovation by third parties in the Australian Federal Court. However, most disputes are settled out of court. It should be noted that certification is not a presumption that the innovation patent is valid.
Included in the innovation patent costs, annual renewal fees are payable throughout the life of the patent, which is up to 8 years.
The flowchart below illustrates the innovation patent process in Australia.
(Click on the image to zoom)
Innovation patent strategy
There are a variety of strategic uses for the innovation patent system. Here are some strategies that have been adopted by our clients at various times:
- An innovation patent can be used to specifically target an alleged infringer of a granted standard patent. This is achieved by filing a divisional innovation patent of the standard patent application. The divisional innovation patent will bear the same priority date as the standard patent application and thus will enable the infringer’s activities to be captured. The claims of the innovation patent are specifically drafted by your patent attorney to ensure the maximum overlap with the infringer’s product or process.
- An innovation patent may be filed as a standard patent is about to expire where the innovation patent differs only marginally from that of the invention of the standard patent, but where the difference possesses an innovative step. In this manner, it is possible to effectively extend patent protection for an invention beyond the initial 20-year term in a process known as evergreening.
- By filing a series of innovation patents surrounding a product of a competitor, it is relatively easy and cost-effective to form a patent thicket around the product, which subsequently makes it increasingly difficult and costly for the competitor to maintain freedom-to-operate.
- A variant on 2. is the filing of multiple divisional innovation patents claiming priority from a standard patent application, each for a minor variant of the invention. This makes opposing the invention a difficult and costly process as the opponent must then challenge each of the innovation patents, as well as the standard patent. Such a patent thicket is also very useful for an application as it creates a great deal of uncertainty for potential competitors as to whether they are likely to infringe one or more of the patents if they decide to enter the sector of the market to which the patents relate.