This Patents Amendment (Innovation Patents) Bill 2000 introduces a new second tier patent for Australia aimed at providing a relatively inexpensive, quick and easy to obtain means of protecting lower level or incremental inventions. The new patent is perceived as particularly providing effective protection for innovations made by small and medium Australian businesses. The Bill passed the House of Representatives of the Federal Parliament on 31 August 2000 and is currently being considered by the Senate.
The new patent, to be known as the innovation patent, replaces the current petty patent which is generally regarded as having failed to provide an effective alternative to the conventional or standard patent. The intention is that the innovation patent will require a lower inventive threshold than that required for a standard or petty patent. However, given the prior art base against which the innovation patent is to be judged, it is not clear that this goal will be achieved. Hopefully this aspect of the matter may be taken up by the Senate during its further deliberation of the Bill.
The term of an innovation patent will be eight years and the complete specification must contain no more than five claims. An innovation patent will be granted without substantive examination. After grant the Commissioner of Patents will substantively examine an innovation patent if he or she decides to do so or is asked to do so by the patentee or any other person. There are several other procedures for examining an innovation patent after grant. A patentee of an innovation patent will not be able to institute infringement proceedings without having the patent substantively examined. A PCT application cannot be made for an innovation patent.
The major substantive difference between the current standard patent and the new innovation patent is that the latter requires an innovative step when compared with the prior art base rather than an inventive step. An innovative step is one which makes a substantial contribution to the working of the invention. However, as mentioned above, the prior art base against which this step is judged may make it difficult to satisfy this intended lower standard. More particularly, the Bill provides that an invention is to be taken to involve an innovative step unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in Australia before the priority date of the relevant claim, only vary in ways that make no substantial contribution to the working of the invention from information made publicly available through doing an act in Australia or from information in a document that is publicly available anywhere in the world. It is surprising that this information is not limited, as it is for determining inventiveness in relation to a standard patent, to information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant. Also, unlike the position in relation to petty patents, the prior art base for determining the innovation threshold of an innovation patent includes information in documents publicly available outside Australia. This also has the result that the prior art base for determining the novelty of an innovation patent is the same as that for determining the novelty of a standard patent.
Another substantive difference between standard and innovation patents relates to patentable subject matter. Except for microbiological processes or products of such processes, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions for the purpose of an innovation patent.