Final Days of the Innovation Patent System
WHAT IS AN INNOVATION PATENT?
In 2001, the innovation patent system was introduced in Australia to provide a “second tier” of protection. Innovation patents are distinct from standard patents in that they have shorter terms (eight years rather than twenty) and are designed to protect inventions that do not satisfy the inventive threshold required for standard patents. Rather than protecting a brand-new invention, the innovation patent protects an incremental advance on an existing invention.
Further, an innovation patent has a five-claim limit and can usually be granted in approximately one month following only a formalities check. The objective of the innovation patent system is to foster innovation amongst small to medium enterprises (SMEs) by providing quicker and more affordable patent rights and an avenue for SMEs to protect their lower level inventions.
WHAT IS THE PROBLEM?
Since the launch of the innovation system in 2001, a variety of concerns have been raised by various stakeholders regarding its operation and effectiveness.
There are three principal issues concerning the current innovation patent system.
Firstly, most SMEs were not properly making use of the system or receiving the material benefits that the system is premised upon. A 2014 review conducted by ACIP (the Advisory Council on Intellectual Property) concluded that the innovation patent system was not fulfilling its stated objectives.
Furthermore, it was believed that the threshold test for innovation was too low. This means that a large number of "inventions" which do not satisfy the usual inventive step threshold may be protected by innovation patents which provide similar rights and remedies as a standard patent and are hard to revoke.
Thirdly, some considered the “granted on filing” system as one that could be easily taken advantage of.
PHASING OUT OF THE INNOVATION PATENT SYSTEM
IP Australia has released draft legislation that includes amendments to support the phasing out of the innovation patent system. Having recently consulted on draft regulations that will accompany this bill, it is now anticipated that IP Australia will introduce the legislation to the Australian Parliament in early 2019.
Assuming the amendments are accepted by Parliament, the innovation patent system will be phased out over eight years. However, innovation patents that were filed before the commencement of the new legislation will not be affected. Likewise, standard patents that were filed before the commencement date may still be later converted into innovation patents.
Accordingly, any potential Australian innovation patents should be filed as soon as possible.
How Can We Help?
If you are considering protecting your intellectual property, contact us now. We can assist you in protecting your innovations in Australia and New Zealand.
Significant changes to Australia’s intellectual property laws will continue to develop. These changes are part of new legislation promoted by IP Australia. We can expect to see changes to Australia’s patent, trade mark, design and plant breeder’s rights legislation.
We will continue to keep you posted on any new developments.