24 December, 2013
Spruson

Will the Innovation Patent Survive?

Will the Innovation Patent Survive?

The Australian Government’s Advisory Council on Intellectual Property (ACIP) has been tasked to review the innovation patent system amidst concerns of the system being ‘abused’. In an August 2013 Paper1, ACIP outlined a number of options for the future of the innovation patent system, and anticipated that its Final Report – which was due by last year’s end– will recommend one of those options to the Federal Government.

The recent, sharp increase in new innovation patent filings by foreign corporations has sparked the ‘abuse’ concerns, with some stakeholders pointing to those foreign corporations misusing the innovation patent system to establish patent ‘thickets’, protect higher-level inventions (when the system was intended to be used for ‘lower-level’ inventions) or indulging in evergreening. The Paper, to the contrary, found no evidence or only minor instances of such ‘abuse’.

Foreign corporations initially were slow in filing innovation patent applications since their inception in 2001. Only about 50 and 150 innovation patent applications were filed in 2001 and 2009, respectively. However, from 2010 onwards the number skyrocketed, resulting in about 550innovation patent applications being filed in 2012.

In contrast, Australian companies filed about 150 innovation patent applications in 2001, steadily increased to about 550 new applications in 2012. Interestingly, a twelve-year growth of filing innovation patents by Australian companies was matched by foreign corporations in only three years! Clearly, some foreign corporations now consider the Australian innovation patent to be a key part of their IP portfolios.

A prominent example of a foreign corporation actively filing innovation patents is Apple, Inc., currently having the largest portfolio of ‘certified’ (i.e., examined and enforceable) innovation patents at 113 – fourteen of which are currently being litigated in the Australian theatre of the Samsung v Apple smart phone war. This is an impressive number, considering that the innovation patents form the bulk of the total twenty-two patents being litigated in this country.

There have also been recent changes to the innovation patent system to raise the patentability threshold, implemented by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The common general knowledge is no longer restricted to Australia, deadlines for filing divisional innovation patents are shortened, and certification of innovation patents is now based on a ‘balance of probability’ test instead of a ‘benefit of the doubt’ approach. These are fairly small incremental changes that probably will have limited impact on the ability to obtain valid protection by way of innovation patents.

We wait with anticipation to see whether the innovation patent system survives the ACIP review.


1Review of the Innovation Patent System - OPTIONS PAPER, August 2013.


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