The innovation patent system was intended to be a second tier patent system. Advantageously, the innovation patent served the needs of Small to Medium Enterprises (SMEs) finding it difficult to obtain standard patent protection due to cost or lack of an inventive step required for standard patents. Despite the advantages of the innovation patent system in serving its intended purpose, the Australian Government abolished it on the basis of it serving unintended purposes such as a highly effective litigation tool.
The decision certainly affects some Australian businesses. As with any change, the abolition of the innovation patent system may also bring opportunities to reconsider how other intellectual property rights can be used to advance business interests of Australian SMEs. There is certainly no shortage of mechanisms to protect intellectual property (IP) rights. Those who adapt to the changes may, in fact, find themselves in a better position overall by diversifying their IP portfolio.
For example, rather than relying solely on innovation patents, businesses may consider industrial design applications, trade marks, utility models in foreign jurisdictions as well as different drafting and prosecution strategies which may suit their specific needs and budget.
Under Australian law, design protection is provided for the overall appearance of the product rather than functional aspects of the product. In other words, if it is the visual features that distinguish your product from competitors, filing a design application may be considered.
A design must be new and distinctive compared to prior art. Design patent applications are registered after passing formalities assessment without undergoing substantive examination. To enforce a registered design, the design application must be examined and certified. The term of protection for a registered design is up to 10 years from the filing date.
An Australian design application can be used as a basis for filing further design applications in other countries.
Foreign Utility Models
While Australia has abolished the innovation patent system, many foreign jurisdictions have a second-tier patent system and grant “utility model” patents as well as standard patents. For example, utility models can be filed in China, Japan, Germany, Russia and various other European countries. There is no second-tier patent system in the United States.
Utility models are typically granted without substantive examination. The term of protection also varies in different jurisdictions. Utility models are not typically governed by International agreements and there may be discrepancies in subject matter, prior art, examination and enforcement requirements.
Filing an Australian complete or provisional patent application establishes a priority date and gives the Applicant 12 months to decide whether utility model protection should be sought in other jurisdictions.
Trade marks are intended to distinguish one’s goods or services from goods or services provided by others in the course of trade.
Trade mark protection can virtually last forever subject to paying appropriate renewal fees. Accordingly, it may be compelling to seek trade mark protection for features of goods and services if such features are capable of distinguishing the goods and services from those of others.
Timing for Requesting Examination
Depending on specific circumstances, standard patent protection may still be the right choice for some Applicants.
To delay substantive cost, if required, the Applicant may defer requesting substantive examination until a later date. In Australia, examination may be requested up to 5 years after the filing date or 2 months after a direction to request examination issues, whichever is earlier. The Australian Patent Office may not issue the Direction until about 56 months from the filing date thus providing the Applicant time to consider whether further costs are justified.
Filing and Drafting Strategies
A complete patent specification is a legal document. The patent specification is typically set in stone at the time of filing and no changes introducing new material are allowed after filing.
Identifying the main inventive concept before filing a complete patent specification may help save time and money during prosecution.
The Australian Patent Office offers a service of conducting an International type search for provisional applications to give the Applicant better understanding how close the invention is to the prior art. The results of the International type search can be used to further refine the inventive concept and revise the provisional patent specification before filing a complete patent application in Australia and/or overseas.
The inventive concept and advantages of the invention provide a guide to which features need to be described in greater detail as no prior art search is perfect and the closest prior art may be found even after the application was granted. Providing examples and specific implementation details in the specification tend to facilitate understanding of the invention and can be relied upon during the prosecution.
Working with your patent attorney is crucial to ensure that relevant details of the invention are included in the specification to improve chances of grant of a patent.
While the innovation patent system is gone, there are transitional arrangements in place to allow innovation patents to be filed of complete patent applications which were filed on or before 25 August 2021, subject to meeting other filing requirements. As such, it may be prudent to consider filing a divisional innovation patent application if there is a parent standard patent application filed on or before 25 August 2021.
Take away notes
Despite innovation patents becoming extinct, there are several mechanisms for still protecting innovations by diversifying and strengthening your IP portfolio.
As each and every situation is different and requires a complex assessment, we encourage you to contact experienced patent attorneys who can provide relevant IP advice.
As always, if you have any questions, please do not hesitate to contact us.