Australia has a second tier patent, referred to as an innovation patent, which is intended to cover lower level inventions. Innovation patents provide the same scope of rights and remedies for infringement as standard patents but have a lower threshold for patentability than standard patents and are therefore more likely to be valid.
The key differences between innovation patents and standard patents are set out below. A summary of a recent judgment demonstrating the level of invention required to sustain an innovation patent is set out overleaf.
- An innovative step rather than an inventive step
An innovative step is usually a much lower standard than an inventive step. It requires a variation over the prior art which ‘makes a substantial contribution to the working of the [claimed product or process]’. Recent case law indicates that even obvious combinations of well known features can qualify for protection.
- An 8 year term instead of a 20 year term
By way of example an innovation patent based on an international patent application will expire eight years after the international filing date.
- Granted without substantive examination
Innovation patents are granted automatically without examination, typically within weeks after the Australian filing date.
An innovation patent is therefore one of the fastest means by which a client can validly claim that their technology is patented.
Innovation patents are not enforceable until after post-grant examination. Examination can be requested at any time during the life of the innovation patent by the patentee or an interested third party. Examination will require restriction of the patent to a total of five claims.
- No pre-grant opposition
Innovation patents provide a rapid route to enforceable rights. An innovation patent cannot be opposed until it has passed examination and then any opposition must cease if court proceedings are commenced.
Options for pursuing an innovation patent
An innovation patent can be filed in the first instance, as a convention application, as a divisional application, or (in effect) as a national phase entry of an international patent application (by filing the innovation patent as a divisional application of the international patent application before the 31 month deadline).
Powerful strategic tools
Innovation patents are becoming popular tools for creating a strong patent position and/or creating substantial uncertainty for the patentee’s competitors.
An increasingly popular strategy involves maintaining a pending standard patent application which is written in broad terms then, if and when a competitor releases a product, an innovation patent application can be filed claiming divisional status from the standard patent application. The coverage of the divisional patent application can be ‘targeted’ on the competitor’s product, meaning that its coverage is narrow, and therefore more likely to be valid, yet still clearly covers the competitor’s product.
The commercial value of Australia’s innovation patent system has been proven by a recent court decision. The decision shows that products with only minor variations over existing products now qualify for patent protection.
All three judges hearing the decision at our appellant court level supported the primary judge’s decision to uphold the validity of various claims relating to spring steel roadside posts.
In an attempt to invalidate the patents, the ‘infringer’ showed that spring steel posts, and other similar posts, were already publicly known. However, none of the earlier roadside posts included the sheet spring steel construction in combination with one or more of the following claimed features:
- a marker hole to help install the post at the correct depth
- a barb serving to anchor the post into the ground
- a tapered end to help with driving the post into the ground
- ribs to resist buckling, and
- certain specific dimensions.
The judges held that any of features 1 to 5 in combination with spring steel qualified for innovation patent protection.
The judges reasoned that the question arising in this case was: ‘Do any of features 1 to 5 (in combination with spring steel) make a substantial contribution to the working of the roadside post?’ The judges answered ‘yes’ in relation to each of features 1 to 5, so these aspects of the patents were considered valid.
Under Australia’s innovation patent system, minor variations over older products can qualify for protection. Indeed even obvious variations can qualify for protection.
Front view of one version of the patented post Figure 5 of patent number 2005100978
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Side view of one version of the patented post Figure 7 of patent number 2005100978
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