On 26 February 2020, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (‘the Act’) received Royal Assent, providing clarity around the phasing out of Australia’s second-tier innovation patent system.
The innovation patent system has provided applicants with a means of protecting inventions that may not necessarily meet the higher inventive step threshold of a standard patent application. They can also be used when an enforceable right is needed quickly. Innovation patents are usually granted within about a month of filing, due to the lack of pre-grant substantive examination. As a trade-off, innovation patents provide a maximum eight-year term of protection compared to the longer 20-year term of a standard patent.
The assent of the Act marks a major milestone in the Australian Government’s response to the Productivity Commission’s 2016 inquiry into Australia’s intellectual property system. As a result of the inquiry, IP Australia concluded that the innovation patent system was not achieving its intended objective of providing Australian small and medium enterprises (SMEs) a faster and cheaper means of attaining protection for their products.
Despite a large number of submissions received in support of the innovation patent system, IP Australia determined that the innovation patent system was achieving the opposite of its intended objective. IP Australia believes that that larger businesses were using the system as a means of filing bulk applications that stifled SME’s freedom to operate, with big businesses and foreign applicants obtaining significantly more granted innovation patents than Australian SMEs.
The Act sets out a final 18-month window ending on 25 August 2021, after which it will no longer be possible to file new innovation patent applications.
It will still be possible to file divisional innovation patent applications from any parent application filed on or before 25 August 2021, and it will still be possible to convert a standard patent application to an innovation patent application if the standard patent application is filed on or before 25 August 2021.
Finally, any existing innovation patents filed on or before 25 August 2021 will remain in force until expiry. The final expiry date of any innovation patents will be 25 August 2029; eight years after the last filing date of 25 August 2021.
These dates are provided on the IP Australia website, along with other information regarding additional changes to Australia’s patent system.
In lieu of the innovation patent, IP Australia intends to develop an SME fast track examination pathway for accelerated examination of a standard patent application, as well as other tools to assist SMEs.