Innovation Patents : The Final Curtain

The Australian Government is phasing out the innovation patent. Wednesday 25 August 2021 marks the beginning of the end of the innovation patent.

Why?

In 2001 the innovation patent was specifically introduced for the benefit of small and medium enterprises (SMEs) as a cost-effective means of obtaining patent protection. The Australian Government believes the innovation patent has not fulfilled its objectives for SMEs and has instead been misused by big businesses. Whether or not you agree with this sentiment, there is only a limited amount of time after which innovation patents will not be accessible.

Innovation patents in brief

Innovation patents form the second tier in a two-tiered patent system in Australia. By comparison to the standard patent, innovation patents have a shorter term of 8 years (the standard patent term is 20 years) and a lower inventive threshold requiring novelty and only an ‘innovative step’ to be enforceable.

An invention is taken to involve an ‘innovative step’ unless it only varies from the prior art in ways that make no substantial contribution to the working of the invention. This means that an innovation patent can be awarded for inventions that are obvious but make a substantial contribution to the working of the invention. By this test innovation patents are inherently easier to obtain and more difficult to invalidate compared to standard patents. The unpretentious innovation patent, in fact, confers quite strong IP rights.

For these reasons an innovation patent can play a strategic part in a patent portfolio.

25 August 2021

That is the final date by which an innovation patent can be filed. After 25 August 2021, innovation patents will not be permitted. And it will take 8 years for the last of the innovation patents to run their course to expiry.

The following summarises the strategies you can use to take advantage of the innovation patent system before it is phased out.

By 25 August 2021 you can:

              A.      File an innovation patent application. This includes a new innovation patent application, or an innovation patent application based on an Australian provisional application or a foreign convention application;

             B.      File a standard patent application and use it later to springboard an innovation patent.  A standard patent application filed before 25 August 2021, either directly or via the PCT, can be used after 25 August 2021 in two ways to nonetheless take advantage of innovation patent protection by:

    1.      Filing a divisional application for an innovation patent from the standard patent application; or
    2.      Converting the standard patent application into an innovation patent application.

The standard patent application must be pending or newly accepted at the time of division or conversion to an innovation patent application. And either way, the 8-year term of the innovation patent will start ticking from the filing date of the standard patent application.

What you need to do

If an Australian innovation patent could be useful to you or your clients, act now before you miss the boat. Our main take-home points are:

  • If you have an invention you are thinking of patenting, don’t wait; file an innovation patent application by 25 August 2021. This may mean skipping the usual step of filing a provisional application first.
  • If you have a pending Australian provisional application, you need to complete the application process by filing an application by 25 August 2021 for either an innovation patent or a standard patent.
  • If you have an overseas priority application, you need to file either a standard patent or an innovation patent application in Australia by 25 August 2021 claiming convention priority. Alternatively, you could file a PCT application designating Australia by 25 August 2021.
  • If you have a pending PCT application, you are safe for now because the PCT filing date is recognised in Australia as the filing date of a standard patent. Just be sure to enter national phase in Australia by the 31-month PCT national phase entry deadline.

For more information visit IP Australia here.

BOSH IP is an Australian IP firm specialising in strategic advice and management of patents and designs.