The Final Report (three years in the making) of ACIP’s Review of the Innovation Patent System was released on 16 June. You can download the full report here.
The key points are as follows:
- ACIP explored three options for the innovation patent system – no change, abolition of the system, and change the system. ACIP has been unable to obtain adequate empirical evidence as to whether the system does or does not stimulate innovation in Australian SMEs.
- ACIP is therefore unable to make a recommendation on whether to retain or abolish the innovation patent system. Evidence is available to support changes to the system. If the government chooses to retain the system, then ACIP urges it to consider various recommendations in this report to enhance its effectiveness and to reduce some of the system’s unintended consequences.
- ACIP recommends amending the Patents Act 1990 (Cth) to raise the level of innovation to a level above the current innovative step level, but below the inventive step level that applies to standard patents. A suitable level of innovative step would be provided by the test of inventiveness described by the High Court of Australia in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd  HCA 9: (1980) 144 CLR 253; (1980) 29 ALR 29 with a modification to that test to include the current definition of what is relevant CGK. In order to be innovative an invention would need to be non-obvious by reference to CGK either within or outside the patent area but not by reference to prior art information that is not part of CGK at the priority date of the relevant claims of the innovation patent. This would be a lower threshold than is applied to standard patents, where the invention must be non-obvious by reference to the CGK and any piece of prior art.
- ACIP recommends amending the Patents Act 1990 (Cth) so that substantive examination must be requested before the third anniversary of the lodgement of an innovation patent. This will allow sufficient time for a patentee to evaluate the commercial potential of their innovation patent before they are called on to commit a reasonable investment in protecting their IPR.
- ACIP recommends amending the Patents Act 1990 (Cth) so that the term ‘patent’ is only used for innovation patents that have been examined and certified. There is a general perception within the broader community that a ‘patent’ has some form of legally-enforceable right. Perhaps the right could be called an ‘innovation application’ up until the time that certification occurs.
- ACIP recommends amending the Patents Act 1990 (Cth) to exclude all methods, all processes and all systems from being patentable inventions for the purposes of an innovation patent. This would better align the innovation patent system with the legal systems of most countries including the large majority of Australia’s major trading partners. It would also address concerns about the effect of innovation patents for methods, processes and systems for implementing what are, in effect, business methods.
- ACIP recommends that, subject to the preceding recommendations being accepted, the remedies for infringement of an innovation patent remain unchanged. ACIP considers that the existing remedies are suitable for a future innovation patent given the raised level of innovation and additional excluded subject matters. ACIP also endorses the current practice whereby courts consider exploitation by the patent holder as a key consideration in any application for an injunction.