Innovations patents update

Innovations patents update

New Frontiers

The Australian government has for some time been formulating a second-tier patent system for protecting innovative developments which may or may not satisfy conventional inventive step requirements but which nevertheless provide some form of useful advance in the field of economic endeavor.

On 24 May 2001 the innovation patent system came into force to replace a previously largely under-utilised "petty patent" system.

What Does it Offer?

An innovation patent provides a quick and relatively cheap mechanism for obtaining rapid grant of a patent. Grant can usually be obtained within one month, after which publication occurs.

Once the patent is granted, it is only enforceable by being subject to an examination process, after which the patent is certified.

The certified patent offers identical protection to a standard patent although the term is limited to 8 years as opposed to 20 years for a standard patent.

The remedies for infringement of an innovation patent are also identical to those available for a standard patent, including injunctive relief and an award of damages or an account of profits.

Strategy

The innovation patent can provide a very useful competitive tool. If an infringer is at large, an innovation patent can be filed, either as a first application or a divisional of a standard application which is still pending. Of course, a double patenting prohibition exists and if the standard application matures into a patent the innovation patent may be surrendered.

Requirements

A specification for an innovation patent application needs to comply with usual formality requirements. An innovation patent can however only have five claims, although the specific claim format can be resolved during examination.

An innovation patent was recently granted for the wheel. Although a rather clever idea of the attorney concerned, to patent the wheel, the patent in question did not in any way demonstrate the effectiveness of this new system, particularly since, if that patent had ultimately been examined, it would not have been certified and enforceable as a result of failing to satisfy novelty requirements.

Validity

The prior art base, against which validity of an innovation is assessed, is the same as for a standard patent, ie publication anywhere in the world and use in Australia only. A significant difference though, is that an innovation patent need only have claims defining novel and innovative subject matter.The conventional "inventive step" requirement is not applied. The strict definition for innovative step is as follows:

"….An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from …[prior art information]………. in ways that make no substantial contribution to the working of the invention."

Accordingly the innovation patent system may provide patent protection for a more "marginal" invention due to the lower "inventiveness" threshold, ie patent protection will be available for novel inventions provided only that there is some claimed feature which provides a "substantial contribution to the working of the invention".

In the last year of the petty patent system, only 619 petty patent applications were filed. Already, since May 2001, in the order of 700 innovation patent applications have been filed.

The innovation patent is, of course, subject to similar invalidity proceedings that may be applied against a standard patent, being revocation, re examination and opposition procedures.

International Conventions

An innovation patent can claim priority from an overseas application and can itself be considered a basic application for priority purposes. However, the innovation patent cannot be a national phase entry of an international application, although that situation is readily addressed by filing an innovation patent application as a divisional of the intended national phase entry.