Innovation patents can provide a fast and cost-effective means for protecting your intellectual property. They are useful tools in supporting the first to marketplace advantage and a strategically valuable asset when it comes to enforcing patent rights. The innovation patent can also reduce some of the financial and commercial risks involved in the research and development of a new invention, and may allow an innovator to protect each stage of development of an invention. We highlight important aspects of the innovation patent system below.
What happens during the Innovation Patent process?
Below is a short animation put together by DCC to guide you through the Australian Innovation Patent process, with useful tips and information along the way.
Length of protection
Perhaps the biggest difference between innovation patents and standard patents is the term: innovation patents offer only 8 years protection, whereas standard patents enjoy 20 years protection.
Benefits of innovation patents
- Low cost – the cost of preparing and filing an innovation patent application is less than a standard patent application.
- Broad coverage – innovation patents can be directed to all subject matter (except plants and animals). Devices, methods, pharmaceuticals etc. that can be protected by a standard patent can be protected by an innovation patent.
- Fast grant – granted without substantive examination, usually within a few weeks.
- Flexible – examination cost can be deferred until desired, usually in response to detected infringement. At that time the claims may be tailored to cover the infringing activity.
- Lower validity standard – innovation patents have a lower threshold for validity than standard patents. Rather than requiring an inventive step (non-obviousness), only an “innovative step” is required. This is determined using a modified novelty test.
- Powerful – innovation patents provide the same relief against infringement as standard patents (injunctions, damages, account of profits).
- Strategically useful – an innovation patent can be obtained in addition to a standard patent provided the claims differ slightly in scope. An innovation patent can be filed as a divisional of a standard patent application allowing the innovation patent to be used for enforcement without compromising the standard patent application.
Applying for and enforcing innovation patents
After filing, an innovation patent is granted following only a formalities examination. Grant can take place in a matter of weeks and publication occurs at grant.
Examination of substance
Obtaining an innovation patent is less expensive than a standard patent because the innovation patent is not examined for substantive issues before being granted. However, an innovation patent cannot be enforced until it has been examined and certified by the Patent Office.
The costs associated with examination can therefore be avoided until it is actually desired to enforce an innovation patent. It is possible though for third parties to request substantive examination of an innovation patent. Substantive examination or certification is relatively quick – any objections raised must be addressed within a non-extendable period of 6 months from the first examination report.
Requirement for innovation patents: an innovative step
The patentability requirements for innovation patents are lower than that for standard patents—only an “innovative step” rather than an “inventive step” is needed.
An innovative step is a feature that makes a significant contribution to the working of the invention. This means that innovation patents can be used to protect developments of an invention, even if the core technology has already been disclosed.
The rights provided by innovation patents
Once certified an innovation patent provides exactly the same rights as a standard patent in terms of the relief available against an infringement (injunctions, damages, account of profits). Further, the same principles of claim construction should apply to an innovation patent as a standard patent.
There is some flexibility associated with filing of innovation patent applications. An innovation patent application can be derived from a PCT application or can be filed as a divisional application of an existing standard patent application. It is also possible to convert a standard patent application into an innovation patent application.