As mentioned in our previous article, the innovation patent, Australia’s second tier patent system, is being phased out from 25 August 2021. Applications with a later filing date cannot be granted as an innovation patent and there is no alternative second tier patent system currently on the way.
If you are considering filing an innovation patent, the key upcoming dates are:
- Before and on 25 August 2021:
Innovation patents can be filed as a first filing application (subject to current limitations); and
- After 25 August 2021:
Innovation patents can only be granted if they have an effective filing date of 25 August 2021 or earlier. Existing standard applications or PCT applications designating Australia may be converted to an innovation patent; or a divisional innovation patent can be filed, so long as the effective filing date is on or before 25 August 2021.
What is an Innovation Patent?
The Innovation patent system is Australia’s second tier patent system which was introduced in 2000 with the aim of providing local SMEs with a cost-effective patenting option for protecting lower level inventions, such as incremental improvements over existing products. Such incremental changes may be encountered in industries such as manufacturing or formulation science, for instance, where the development of products that have commercial advantages over current products may not meet the inventive step threshold required to obtain standard patent protection.
Innovation patents plug this gap by reducing the patentability threshold to that of an “innovative step”, which only requires that a “substantial”, or non-trivial, contribution to the working of the invention is made, even if that change is obvious (for example, replacing a solvent in a formulation for improved stability). Innovation patents are also granted without substantive examination, although they can only be enforced once they are certified following examination. However, the trade-off is only eight years of protection, compared to 20 years for standard patents.
However, while this system has been used as intended by some SME’s, it has also been used as a litigation tool by large foreign corporations, or by other foreign applicants to obtain ‘granted’ (albeit unenforceable) patent rights in Australia. Accordingly, despite much campaigning by SME’s to retain or amend the innovation patent system, as the system is arguably not having the intended effect, they are being phased out.
It’s Not Too Late
Although time is running out, it is not too late to file an innovation patent. As mentioned above, innovation patents are suited to incremental changes over known products, as long as the change is novel and provides a real or tangible contribution to the working of an invention.
Furthermore, there are no plans by the Federal Government to provide an alternative second tier patenting system any time soon. After 25 August 2021, patent protection for incremental improvements may be more difficult to obtain as they will need to satisfy the higher inventive step threshold.
If you think that you may have an invention that meets the above criteria, please contact us and we can discuss your options and suitability to use the innovation patent system – while you still can. Spruson & Ferguson