Australia has a unique ‘second tier’ patent called the innovation patent. An innovation patent has a lower threshold for patentability compared to a standard patent and therefore provides a strong form of patent protection that can be relatively easy to obtain and difficult to invalidate.
However, the Australian innovation patent system is being phased out from 26 August 2021. We first reported on the new legislation phasing out the Innovation patent system in February 2020, just before the new legislation came into force. The Australian government has given a number of reasons for its decision to phase out the innovation patent, including:
- Innovation patents being used by applicants as a strategic tool to stifle competition, by filing innovation patents to surround (ring fence) competitors’ products, and
- the lower standard for enforcement, and grant without substantive examination, creating uncertainty around where competitors have freedom to operate.
It is still possible to file innovation patent applications
An Australian patent application or PCT patent application designating Australia must be filed on or before 25 August 2021 to preserve the right to file an innovation patent application before the innovation patent system is completely phased out in 2029. An Australian patent application with a filing date (or international filing date) after 25 August 2021 will not meet the filing requirements for an innovation patent application.
A standard Australian patent application with a filing date (or international filing date) of 25 August 2021 or earlier can be subsequently converted to an innovation patent application post filing. Alternatively, a divisional innovation patent application can be filed from a standard patent application. It is therefore possible for an applicant to strengthen its patent portfolio by having one or more divisional innovation patents granted in addition to one or more standard patents, as long as the above filing deadline is observed.
Any applicants who file or have filed a priority forming application after 25 August 2020 should consider filing a PCT or convention application in Australia early, on or before 25 August 2021, to maintain the opportunity to pursue an innovation patent to strengthen its patent protection in Australia. We recommend this deadline is diarised now for any priority application with a Paris Convention deadline after 25 August 2021.
