Australia begins to phase out the innovation patent system

File your innovation patent applications by 26 August 2021

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 was recently enacted into Australian legislation on 26 February 2020 and the new laws begin the process of phasing out the Australian innovation patent system after much debate as to the utility of the system and its ability to stimulate real innovation.

What are the critical dates?

  • Innovation patent applications can no longer be filed on or after 26 August 2021
  • It is still possible to file divisional innovation patent applications after 26 August 2021, provided that the ultimate ‘parent’ application has an effective filing date before 26 August 2021
  • Pending standard patent applications (i.e., those having an effective filing date before 26 August 2021) can still be converted into an innovation patent

Importantly, existing innovation patents will not be affected by the changes.

Given that all innovation patents have an 8-year term, all granted innovation patents will have expired by 26 August 2029.

What are innovation patents?

The Australian patent system currently provides for two types of patents:

  • a standard patent; and
  • an innovation patent.

An innovation patent is a 2nd tier form of patent protection, intended to provide small to medium-sized enterprises (SMEs) with a fast and cost-effective means for protecting their intellectual property.

Innovation patents have a much lower ‘innovative step’ threshold when compared to the ‘inventive step’ requirement for standard patents, have a shorter term of 8 years (compared to 20 years for standard patents) and are limited to 5 claims only. Innovation patents can also be directed to the same subject matter as that for standard patents (e.g., devices, methods, pharmaceuticals, etc.).

Innovation patents are granted very quickly, typically within one month of filing. This is because innovation patent applications are not subject to substantive examination before patent grant. The relative ease in obtaining innovation patents make it particularly valuable for SMEs that develop incremental yet commercially significant advances over existing technology.

An innovation patent can only be enforced after it has passed an optional post-grant certification examination process. Once certified, innovation patents can be a powerful litigation tool offering the same relief for infringement as standard patents (injunctions, damages, account of profits, etc).

What now?

Whilst this is no doubt disappointing news for many, there is still time for applicants to take advantage of the Australian innovation patent system while it still exists.

Applicants may file an innovation patent application before 26 August 2021, or at least a standard patent application before 26 August 2021, which can later be converted into an innovation patent or form the basis for the filing of a divisional innovation patent application.

Please contact us if you have any questions, or if you would like to discuss the filing of innovation patent applications in Australia.

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