Innovation patents – Raising The Step but is it a step too high?
IP Australia has issued a consultation paper concerning a proposal it has made to raise the threshold for inventiveness for grant of an innovation patent to the same level as that which has been introduced for standard patents by the recently enacted “Raising the Bar” Act. The closing date for submissions is 25 October 2012.
A quick background to innovation patents
When the Innovation Patent system was introduced in 2001 to replace the previous Petty Patent system it was envisaged that the primary users would be Australian individuals and companies. It was designed to be a relatively low-cost and simple system with a lower patentability threshold than that required for standard patents.
Why IP Australia propose to Raise The Step
Since 2001, although the majority of innovation patent applications are still filed by Australian companies and individuals nevertheless the percentage filed by overseas applicants has increased. IP Australia in its consultation paper notes that most of the increase in filings by overseas applicants has occurred in recent years following a decision of the Federal Court in the Delnorth1 case which ascribed a lower level of patentability for innovation patents than had been envisaged by the designers of the system.
IP Australia considers that a particular concern of the current low patentability for innovation patents is the potential to the create walls of patents around certain inventions or “evergreening” to extend the effective life of patents. Although not explicitly stated, one assumes this is directed at large corporations which are significant users of the patent system rather than smaller companies and individuals. IP Australia also considers that the current low patentability threshold required for innovation patents is inconsistent with the basic objectives underlying the recent “Raising the Bar” Act.
Call for feedback submissions to the innovation patent proposal Raising the Step
Although a review on the effectiveness of the Innovation Patent system in stimulating innovation by Australian small to medium business enterprises is being undertaken by the Advisory Council on Intellectual Property (ACIP) it is going to be some time before that review is completed and in the interim the changes discussed above are proposed to be implemented. We refer you to the relevant IP Australia webpage should you wish to make submissions to oppose the proposal. Note that the deadline for submission is 25th October 2012.
Commentary on the innovation patent – Raising The Step Proposal
The writer’s view on this is that while as a consequence of the Delnorth case the threshold for patentability of an innovation patent is too low, nevertheless it would not be difficult to make changes to raise that level into line to that which had originally been envisaged when the system was first designed. Given that the present proposal is to raise the bar to the same level as that required for a standard patent, irrespective of the results of the current ACIP review it is difficult to imagine that IP Australia would want to “backtrack” from this at some time in the future. These proposals do appear to be the beginning of the end of the Innovation Patent system.
- Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd  FCA 1225