The Australian innovation patent system is a ‘second-tier’ patent system, intended to support innovation by local small to medium enterprises by providing a fast, lower cost option to obtain patent protection. The Innovation patent system has been in place since 2001.
An innovation patent has a lower patentability requirement of an ‘innovative step’, compared to the higher ‘inventive step’ threshold applied to standard patents. The lower innovative step threshold means the innovation patent provides its owner with strong patent protection, being tough to invalidate in view of prior art.
While an innovation patent has a lower patentability threshold, it also has a much shorter patent term of 8-years compared to the 20-year term of a standard patent.
Abolishment of the innovation patent system has been considered on and off for years. The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 which includes sections to phase out the innovation patent was finally passed on 5 February 2020. The passing of the Bill is the beginning of the end for the innovation patent.
Provisions relating to the abolishment of the innovation patent come into force 18-months after the commencement of the new Act. The Bill will receive the Royal Assent soon. Should the Bill receive the Royal Assent in March 2020 the final date on which an innovation patent can be filed will fall in September 2021.
Divisional innovation patents will still be able to be filed where the date of the parent patent or patent application precedes the final date for filing an innovation patent application. It will also be possible to convert a standard patent application to an innovation patent application where the date of the standard patent precedes the final date. Given its 8-year term, all innovation patents will have finally expired in the second half of 2029.
Applicants should consider their filing strategies over the next 12 to 18 months to ensure any necessary innovation patent applications are filed in time.
