What savvy IP users know about innovation patents

Date: 2021-08-19
Author: Tracey Hendy

As the sun begins to set on innovation patents on 25 August this month, don’t miss this critical deadline to take advantage of these powerful tools. Innovation patents are secret weapons that can effectively be used to thwart competitors by creating broader and stronger patent protection. This article explores how your business can benefit from an innovation patent. For those businesses embarking on a protection strategy for a commercially important invention, this article explains how to enhance that protection using innovation patents.

What is an innovation patent?

An innovation patent is a short-term patent available in Australia, akin to a utility model.

You’re probably wondering why you would want one instead of your standard twenty-year patent. You are probably thinking, surely, 20 years has to be better than 8 years?

It’s a case of horses for courses.

The real advantage of an innovation patent in Australia is that it does not require an inventive step to be valid. Rather, the claim of an innovation patent must be novel, and the novel feature must contribute to the working of the invention. This means an innovation patent has greater immunity to attack from competitors. This makes them a powerful deterrent to competitors stepping on your patent rights or those of your clients.

Even for a relatively meagre innovation which does not pass the conventional inventive step threshold, a company can be granted an 8 year monopoly by the government, with the same sanctions afforded to a standard patent.

How to use innovation patents

Sophisticated users of the patent system use the strength of innovation patents to create one or more subsidiary patents around important inventions to cover off different aspects, increase the expanse of protection and thereby thwart competitors from designing around the technology. An innovation patent can be used advantageously to obtain either:

  • broader protection than a standard patent, relying on the low threshold of innovation; or
  • similar protection to the standard patent, with the innovation patent being less vulnerable to attack than the standard patent.

For an important invention/innovation, we recommend the strategic filing of one or more innovation patents, in addition to standard patents.

Additionally, an innovation patent is granted quickly and is enforceable within a short time frame, whereas standard patents can be delayed for several years by competitors opposing grant.

How to create stronger and broader or "umbrella" patent protection

Innovation patents can be used alongside standard patents without one having a negative effect on the other. With the “umbrella strategy”, you can obtain innovation patents synchronously with standard patents. The innovation patent will provide robust and readily enforceable protection for the first 8 years, often of broader scope, with the residual period of 9-20 years being protected by standard patents (which admittedly are more readily challengeable in the courts).

How to create umbrella protection in foreign countries

This umbrella strategy can be extended to certain other countries by the use of utility models, which are typically available in a number of Asian jurisdictions, as well as certain European jurisdictions. The term of protection for utility models is typically 10 years and more in some cases.

Please contact us if you wish to extend your patent strategy to foreign countries and we can advise.

Deadline for filing innovation patents

The government has decided to phase out innovation patents.

The last day for securing the right to file an innovation patent application into Australia is 25 August 2021. If a PCT or Australian (non-provisional) application is filed by this deadline, the option to pursue innovation patent protection indirectly remains available by way of a divisional or conversion innovation patent. It is also possible to file an innovation patent directly into Australia by 25 August 2021 as a first or Convention filing.

If you would like to explore an innovation patent strategy please do not hesitate to contact us as soon as possible.