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Patent Attorneys’ New Uses For Innovation Patents

From 1994 to 2000, Dr John Baxter was a Member of the Advisory Council on Industrial Property (ACIP) for IP Australia. ACIP played a key role in the development of the Australian Innovation Patent system which was launched in 2001. Up to this stage there was no “second tier” patent system available to inventors, particularly SMEs, who wished to protect inventions in Australia which involved a “lesser inventive step”.

The previous Australian Petty Patent system, although providing protection of inventions for a shorter term than that of a Standard Patent, required a similar level of inventive step and, as such, was not “equivalent” to the Utility Model protection available for some years in over 48 other overseas jurisdictions such as Japan, Germany, France, and Taiwan. The Australian Petty Patent system, which was first launched in 1979, was replaced with the introduction of the Australian Innovation Patent in 2001.

An Australian Innovation Patent provides protection for new devices, substances, methods or processes which produces a concrete, tangible, physical or observable effect. The innovation patent has a protection term of 8 years from filing and is limited to 5 claims. Once filed, an innovation patent application will pass through a formalities check and will generally be granted within 3 months. It is important to note that a granted innovation patent is not legally enforceable in an Australian court unless the innovation patent has been examined for validity and certified. Examination can be requested at any time by the patentee or even by a third party and generally takes less than 6 months to be completed. Upon successfully passing examination, the innovation patent will become certified and thus legally enforceable.

The novelty test for an Australian Innovation Patent is essentially the same as for a Standard Patent. However the inventive step (i.e. the “lack of obviousness”) test is instead replaced by an “innovative step” test. Exactly what constituted an innovative step was quite abstract until the recent decision in Delnorth Pty Ltd V Dura-post (Aust) Pty Ltd [2008] FCA 1225 issued. In this case, the Federal Court of Australia states two steps that can be used to determine the existence of an innovative step. The steps are:

  1. To compare the innovation as claimed in each claim with the prior art base and determine the difference or differences;
  2. To look at those differences through the eyes of a person skilled in the relevant art and assess whether the invention as claimed differs from the prior art in at least one way that makes a substantial contribution to the working of the invention. The Federal Court further clarified that the features that distinguished the innovation over the prior art can be features that are obvious to a person skilled in the art. The only requirement is that at least one of the features makes a substantial contribution to the working of the innovation.

Innovation patents are not only a useful tool to protect innovations that do not reach the inventive step threshold but can also be used as a powerful litigation tool. As innovation patents are granted and certified relatively quickly, a patentee is able to file divisional innovation patent applications from a pending PCT or standard patent application to take action against an infringer before the acceptance of the standard patent. In our firm’s experience, we have found divisional innovation patents to be powerful litigation tools since they can be very difficult to invalidate. The reason for this is that obviousness is not a valid ground for invalidity. Although the infringer may be able to design around a divisional innovation patent, the patentee can theoretically file a separate innovation patent tailored for each infringing product. Furthermore, as there is some allowance for amendments prior to acceptance of the standard patent, any argument of invalidity against the divisional innovation patents can be used to amend the pending standard patent to make it stronger.

For more information on innovation patents and whether this type of patent application is applicable in your circumstances, please do not hesitate to contact your Baxter IP patent attorney.