An innovation patent is a government (IP Australia) granted right which gives the inventor (or owner of the invention) an exclusive right to commercialise their invention in Australia. It provides the patentee a monopoly to that invention, to the exclusion of all others, for an eight year term. This is in contrast to a standard patent which provides a twenty year term of protection and requires a higher level of inventiveness. This article will examine the key differences between innovation patents and standard patents, as well as recent changes to the innovation patent system.

What are the criteria to obtain an innovation patent in Australia?

An innovation patent must meet two key criteria, as at the date of filing date of the patent (known as the ‘priority date’), in order to qualify for patent protection:

  1. Firstly, the invention must be ‘novel’, or in other words new. To be novel the invention must not have been publicly disclosed or known anywhere in the world.
  2. Secondly, the invention must possess an ‘innovative step’. This requires that the invention differs in some way to what is already known by a person skilled in the relevant industry or field (based on their common general knowledge at the relevant time), so as to make a substantial contribution to the working of that invention. Unlike standard patents, an innovation patent does not need to be non-obvious. This is the key difference which lowers the level of inventiveness required for an innovation patent.

These two key patentability criteria are judged against what is known as the ‘prior art’. The prior art comprises of any publicly available information that existed before the priority date. They typically are published documents and in some cases verbal disclosures, commercial use of the invention, promotion, offering for sale or sale of the invention itself.

In addition to the two key criteria above, the other criteria also required for innovation patent protection include:

  1. The invention is patentable subject matter;
  2. The invention is useful; and
  3. There is no prior use of the invention before the priority date.

NOTE: The novelty of your invention (and therefore the patentability of your invention) can be lost even by disclosing it to your customers, manufacturers, investors and other commercial partners prior to the priority date, unless that disclosure is protected by obligations of confidentiality. It is very important that, in order to protect the patentability of your invention, you ensure appropriate confidentiality agreements or non-disclosure agreements are in place with these third-parties before disclosing your invention. See our article on ‘What is a confidentiality agreement and when do I need one’ for more information.

Is the innovation patent still available?

Introduced in 2001, the innovation patent was a second tier of protection available to prospective patentees. This system of protection was aimed at incentivising innovation in small and medium enterprises in Australia by being a quicker (that is, quicker to achieve grant) and more cost-effective process when compared to the standard patent system.

The innovation patent system has recently been phased out, starting on 26 August 2021. However, innovation patents in certain circumstances continue to remain in force or can still be subsequently applied for:

  1. Innovation patents existing prior to 26 August 2021 will continue to remain in force until the expiry of their eight year term;
  2. New innovation patent applications filed prior to 26 August 2021, if they are registered and/or certified, will also continue to remain in force until the expiry of their eight year term;
  3. A standard patent application filed prior to 26 August 2021 can be converted to an innovation patent; and
  4. A divisional innovation patent application can be filed from its parent application, so long as its parent application was filed prior to 26 August 2021.

Innovation patent applications first undergo a formalities examination and are subsequently registered. However, a registered innovation patent cannot be enforced (that is, used to threaten or commence patent infringement proceedings against an infringer) until it is certified. This requires the registered innovation patent to undergo substantive examination. Certification for existing innovation patents or qualifying newly filed innovation can still be requested at any time by the patentee during its term and is not affected by the 26 August 2021 phase out date.

Key takeaways

Maintaining an existing innovation patent or filing for a qualifying new innovation patent still remains a very important intellectual property asset for a business. They are assets that form part of the valuation of a business. They are also rights that can enforced against infringers, in turn protecting market share and profits.

Notwithstanding that the innovation patent system has now been phased out in Australia, there remain certain circumstances where new innovation patent applications can still be filed. You should seek the advice of an intellectual property lawyer and patent attorney to understand your options regarding innovation patents and how they might still apply for your business.

Actuate IP has a team of intellectual property experts who can assist with Patent Searches, Drafting, Filing & Prosectution. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.

FAQs

What are the differences between an innovation patent and a standard patent?

Introduced in 2001, the innovation patent was a second tier of protection available with a quicker (that is, quicker to achieve grant) and more cost-effective process when compared to the standard patent system. Unlike standard patents, an innovation patent does not need to be non-obvious. This is the key difference which lowers the level of inventiveness required for an innovation patent. However, the term of protection is also shorter for innovation patents (eight years) than standard patents (twenty years).

Can I still apply for an innovation patent?

The innovation patent system has recently been phased out, starting on 26 August 2021. However, innovation patents in certain circumstances continue to remain in force or can still be subsequently applied for.