As of 26 August 2021, applicants will no longer be able to file new innovation patent applications. This comes as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 being passed into law on 5 February 2020, and this Bill receiving Royal Assent on 26 February 2020, the latter date setting the 18-month deadline noted above.
It is important to note that after 26 August 2021, although no new innovation patent applications can be filed, existing standard applications can be converted to innovation patent applications and divisional innovation patent applications can also be filed based on existing applications. Given the 8-year term of innovation patents, this would mean that innovation patents will cease to exist as of 26 August 2029.
The phasing out of the innovation patent came about some years ago based on the Productivity Commission’s public inquiry into Australia’s Intellectual Property system. The Productivity Commission’s Inquiry report, sent to the government on 23 September 2016 and published on 20 December 2016, recommended that the innovation patent system be phased out. This recommendation was due to the perceived shortcomings of the system that enable it to be used in a manner not in line with the original objectives of the system, those objectives being to provide a more cost effective option for small to medium entities to protect inventions that were considered more short term or incremental improvements, and therefore encourage innovation amongst these entities.
Based on the recommendations in the Inquiry report, the Australian government chose to commence steps to phase out the innovation patent system altogether rather than the more taxing route of reforming the system so that it would still fit within its original objective.
Any applicant seeking to utilise the innovation patent system should note the 26 August 2021 deadline and plan to have their new innovation patent application(s) filed by this date. A fairly common path taken by applicants is to file a provisional application and then file a complete innovation patent application claiming priority to the earlier filed provisional application within twelve months. For this common path scenario, the filing of a complete innovation patent application may need to be brought forward if the provisional application is filed later than 26 August 2020. This consideration will also be important for the filing of standard complete applications based on provisional applications, where the applicant wishes to preserve the option of later filing a divisional innovation patent application.
If you have any questions regarding strategies for using the innovation patent system whilst it still exists and/or wish to discuss potential innovation patent options relating to your own patent portfolio, please contact us and we would be more than happy to discuss this with you.
By Nicholas Lakatos