Up until recently, Australia had a second tier patent, referred to as an innovation patent, intended to cover lower level inventions than those protected by standard patents. Innovation patents provide the same scope of rights and remedies for infringement as standard patents but have a lower threshold for patentability than standard patents and are therefore more likely to be valid.
With the phasing out of the innovation patent system, an innovation patent must have a filing date of 25 August 2021 or earlier. This means that it is now too late for new innovation patent applications to be filed. However, for existing PCT applications filed before this date, or for applications filed in Australia before this date, an innovation patent is still possible.
The key differences between innovation patents and standard patents are set out below.
An innovative step is usually a much lower standard than an inventive step. It requires a variation over the prior art which ‘makes a substantial contribution to the working of the [claimed product or process]’. Recent case law indicates that even obvious combinations of well-known features can qualify for protection.
By way of example an innovation patent based on an international patent application will expire eight years after the international filing date.
Innovation patents are granted automatically without examination, typically within weeks after the Australian filing date.
An innovation patent is therefore one of the fastest means by which a client can validly claim that their technology is patented.
Innovation patents are not enforceable until after post-grant examination. Examination can be requested at any time during the life of the innovation patent by the patentee or an interested third party. Examination will require restriction of the patent to a total of 5 claims.
Innovation patents provide a rapid route to enforceable rights. An innovation patent cannot be opposed until it has passed examination and then any opposition must cease if court proceedings are commenced.
In the first instance, an innovation patent can be filed as a convention application, as a divisional application, or as a national phase entry of an international patent application, (by filing the innovation patent as a divisional application of the international patent application before the 31 month deadline).
Innovation patents are becoming popular tools for creating a strong patent position and/or creating substantial uncertainty for the patentee’s competitors.
An increasingly popular strategy involves maintaining a pending standard patent application which is written in broad terms then, if and when a competitor releases a product, an innovation patent application can be filed claiming divisional status from the standard patent application. The coverage of the divisional patent application can be ‘targeted’ on the competitor’s product, meaning that its coverage is narrow, and therefore more likely to be valid, yet still clearly covers the competitor’s product.