A final opportunity to use the Australian innovation patent

Posted by Mike Biagio on

A final opportunity to use the Australian innovation patent

The Australian government has announced that it will be phasing out the innovation patent. New innovation patents can be filed only up until 25 August 2021.

Why are they doing this?

The Australian government has concluded that the innovation patent system was not achieving its intended objective in that it has a high regulatory cost, and it fails to incentivise research and development. They also believe that the innovation patent allows big businesses to block small and medium enterprises (SMEs) from innovating. One of the strategies used by big business to stifle competitors is to file large numbers of innovation patents surrounding an SME’s product.

Further, overseas countries typically do not offer a similar level of protection to Australian inventors. In addition, innovation patents make a public disclosure of the inventors technology, exposing them to overseas copycats.

How will this affect my current innovation patent?

Currently existing innovation patents will continue to have effect until they expire. This will ensure that current owners of innovation patents are not disadvantaged.

As long as a parent Australian standard patent application or a parent innovation patent application has been filed before this deadline, then a divisional innovation patent application can be filed after this deadline.

If you have filed a standard patent application before this deadline, it will be possible to convert the standard patent application to an innovation patent application after this deadline.

There will be no extensions of time available for the late filing of innovation patent applications.

Certification of innovation patents can still be requested at any time during the life of the innovation patent.

Why would I want to file an innovation patent application?

A standard patent requires that the invention must be new, and must involve a meaningful “inventive step”, which means that the differences between the invention and what has been put in the public domain previously must not have been obvious to a person skilled in the art.

In contrast, an innovation patent application must only involve an “innovative step” which requires that the differences must only offer a significant contribution to the art, and not necessarily a non-obvious one. This makes innovation patent applications much easier to obtain. However, once obtained, innovation patent applications are really difficult to invalidate on the basis of them not involving an innovative step. Typically, if any item of prior art is used to challenge the validity of an innovation patent, it must be almost a direct knock-out to have a good chance of invalidating the innovation patent. In the meantime, the certified innovation patent presents as much of a threat to your competitors as a standard patent.

Innovation patent applications also have a really quick process to grant. Typically, innovation patent applications are granted when in about 3 to 4 months of filing. After grant, applicants can avoid further costs by not requesting examination for the entire lifespan of the innovation patent application. Costs would only need to be incurred in requesting examination of the innovation patent application if competitors are actually potentially infringing in the marketplace. In this way, innovation patents are cost-effective.

Further, innovation patents can be used to quickly obtain protection enforceable in Australia by filing them and requesting examination, typically resulting in the certification of the innovation patent within about 6 months, while a parallel standard patent application can remain pending for years.

What do I do now?

If you think that obtaining innovation patent protection would be beneficial to your business, please feel free to contact one of our patent attorneys, and keep the above in mind.