Innovation Patents’ Long Goodbye In Sight

Unlike Raymond Chandler’s 1953 novel “The Long Goodbye”, later adapted as a 1973 film starring Elliot Gould, the long goodbye from Australia’s innovation patent won’t be winning any literary awards.

If the end of the innovation patent seems like it has been coming for a long time, that’s because it has. The Australian Government first directed that the now-defunct Advisory Council on Intellectual Property (ACIP) review the innovation patent system in 2011. A number of reviews and reports have issued since, with the fate of the innovation patent effectively being sealed mid-2017, although several rounds of lobbying by interest groups have seen the innovation patent limp to this point.

Now is the time

Now is very definitely the time to consider whether an innovation patent might be a useful addition to your suite of intellectual property protection.

As of 25 August 2021, it will not be possible to file an innovation patent that doesn’t have an effective filing date of that date or earlier. That is, after this date the only innovation patent applications that can be filed will be those that are either converted standard applications or are divisional applications of standard or PCT applications.

Whatever the case, all innovation patents will have expired by 26 August 2029.

Strategies you might employ

With the approaching beginning of the innovation patent’s sunset, existing patent applicants and those contemplating protection should carefully consider whether they should be filing one or more innovation patent applications.

In considering these strategies you should note that the maximum term of an innovation patent is 8 years from the patent date, which if the innovation patent is claiming divisional status is the filing date of the ultimate parent application.

It should also be noted that prior to asserting an innovation patent it is necessary to seek ‘certification’ of the innovation patent. This is a typical, although relatively quick, examination process. However, the obviousness test is replaced with the less onerous ‘innovative step’ requirement.

Quick grant

Innovation patents are granted within 4 to 6 weeks of filing, often sooner. If a quick grant is expected to be a useful public relations exercise or might improve investor relations, then an innovation patent may be appropriate.

Divisional application

An innovation patent application can be filed as a divisional application of an Australian standard application, or a pending international (PCT) patent application.

This is a good mechanism by which a quick grant can be obtained, with all the associated signals that sends to interested third parties, whilst the applicant retains the prospects of also obtaining a granted standard patent in due course.

Convention application

An innovation patent application can be filed claiming association/priority with/from an Australian provisional application or an overseas patent application to realise the various benefits of early grant, ability to target claims and the ability to retain the opportunity of obtaining protection for the longer term through a standard application.

Negotiation/litigation tool

Applicants with pending Australian standard applications or pending international (PCT) patent applications that become aware of infringements but are facing the prospect of possibly several years of prosecution before a grant can consider filing a divisional innovation patent application.

The claims of such a divisional innovation patent application can take account of the infringement without impacting the potential scope of the standard patent application from which it claims divisional status.

The lower hurdle of the ‘innovative step’ compared to the inventive step requirement of standard patents is useful in these circumstances as innovation patents are arguably relatively easy to obtain and harder to revoke.

Creating a patent thicket

Any number of divisional innovation patent applications can be filed from a pending Australian standard application or pending international (PCT) patent application, making this a relatively effective way of quickly establishing a ‘patent thicket’ that makes it difficult for a competitor to map a way through without the potential for infringement.

Hot tip

It makes sense to consider whether now is the time to take advantage of Australia’s innovation patent system. Even though the innovation patent is saying goodbye, it offers significant opportunities for current and potential patent applicants in Australia to improve and solidify their intellectual property position.

Key Dates

25 August 2021
The last date you can file any innovation patent application that isn’t claiming an earlier filing date.

26 August 2029
All innovation patents will have expired by this date.

Wrays Industry Insights, Insights