The innovation patent was introduced into the Australian patent system in 2001. The innovation patent is akin to the utility model present in some other patent systems such as China, Japan, South Korea, Germany and France. Below is a brief guide to some of the key features of the innovation patent system.
1. Key features of the innovation patent system
An innovation patent has a full term of 8 years from the filing date, with renewals payable each year from the 2nd anniversary to the 7th anniversary. An innovation patent is permitted to contain a maximum of 5 claims.
Innovation patent applications are initially examined for formalities purposes only, and no substantive examination occurs before grant. Accordingly, the innovation patent is typically granted within 4 weeks of lodgement.
However, if the patentee wishes to enforce the innovation patent against an alleged infringer, the patent must be “certified”. Certification involves post grant substantive examination to ensure the patent meets various patentability requirements, including novelty and “innovative step”. Innovative step is a lower threshold than the inventive step requirement for standard patents, and this will be discussed in more detail below.
Within around 4 to 8 weeks of requesting post grant examination, either an examination report or a Certificate of Examination will issue. If any objections are raised in an examination report, the applicant will have a period of 6 months (non extendable) to overcome the objections, or the patent will be revoked. Once a Certificate of Examination issues, the patent is immediately enforceable.
The time period from lodgement through to certification may be as little as 2 to 4 months, which results in enforceable rights much faster than would normally be achievable with a standard patent application. An innovation patent provides the same relief against infringement as is afforded by a standard patent, including injunctions, account of profit and damages.
An innovation patent cannot be opposed until it has been certified and then, any opposition must cease if court proceedings are commenced.
2. What constitutes an innovative step?
s(7)(4) of the Australian Patents Act 1990 states that:
“For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention”
In an early decision on what constitutes an innovative step, (Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd  FCAFC 81) the Full Federal Court held that the Court must compare the claimed invention with each prior art document and identify whether any variations between the claimed invention and the prior disclosure make a substantial contribution to the working of the invention. The Full Federal Court accepted the view that “substantial” in this context means “real”, or “of substance”.
In practice, this means that where the difference(s) between the claimed invention and the prior art contributes to the working of the invention then it is entitled to protection, whether or not it is obvious.
3. When are innovation patents appropriate?
Innovation patents were initially intended for “low level inventions” that might not satisfy the requirements for protection through the standard patent system. However, as the system has evolved since commencement, applicants are increasingly using the innovation patent system for various reasons, some of which are discussed in the links below:
The innovation patent system is structured around lower official fees for lodgement and renewals when compared with standard patent applications. In addition, the certification stage is optional, and can be commenced at any time during the term of the patent. In a majority of instances, it may not be necessary to request certification (and hence pay the relevant fees) during the life of the patent. On account of the reduced fees and simplified prosecution process, the total costs for an innovation patent are often significantly lower than a standard patent. Accordingly, the innovation patent system may be of particular interest to cost sensitive applicants.
On account of innovation patents being granted and certified in a reasonably short time period, typically 2 to 4 months, they enable patent owners to commence infringement proceedings much earlier than would otherwise be possible with a standard patent. Accordingly, it is increasingly common for patent applicants to file an innovation divisional application claiming divisional status from a pending standard patent application. This provides a number of strategic advantages. In particular, the patentee can commence proceedings on the innovation patent once it has been certified, while the parent (standard) application remains pending. This keeps the patentee’s options open to make claim amendments to the parent, or file further divisional applications in light of prior art or other evidence raised during litigation.
In the scenario described above, it is common to maintain broad claims in the standard (parent) application, whilst the claims of the innovation patent may be somewhat targeted to a specific competitor’s product. The targeted claims of the innovation patent may be intentionally narrow to increase the likelihood of the innovation patent being held to be valid in light of the prior art.
It is possible for an innovation patent and a standard patent to be granted on the same invention, provided the claims differ in scope.
Insurmountable inventive step objections
A standard patent application may be converted to an innovation patent application in the event that insurmountable inventive step (obviousness) objections are raised during examination. In this way, a patent applicant can initially seek the longer term and other advantages of a standard patent, but may voluntarily convert to an innovation patent if required during prosecution.
It should be noted that whilst it is also technically possible to convert an innovation patent application to a standard patent application prior to grant of the innvoation patent, in practice the time period available for doing so is very short as innovation patents are typically granted within 2 to 4 weeks of lodgement.
Additional patent protection
For commercially important inventions, patentees may consider pursuing innovation patent protection (possibly through filing an innovation divisional patent application) in addition to standard patent protection. As noted above, it is possible for an innovation patent and a standard patent to be granted on the same invention, provided the claims differ in scope slightly.
This strategy can be of merit, as the lower threshold of innovative step when compared to inventive step in practice means that innovation patents are more difficult to revoke that standard patents. Having a portfolio of patents on the same or similar technology can make it much more difficult for competitors to operate in a given field, and increases freedom to operate uncertainty for competitors.
The innovation patent is just one tool to be considered in a broad patenting strategy. Whilst we generally recommend the use of standard patent applications where possible, innovation patents can be used to advantage in many scenarios. Although the innovation patent system began with the aim of providing cost effective protection for inventions of low inventive merit, the increase in innovation patent filings by large companies is a trend that has become increasingly clear in the past three years. This trend is highlighted by Apple Inc. which is presently one of the largest owners of certified innovation patents.
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