In general, there are three essential requirements you must meet for your invention to be ‘patentable’ (i.e. your invention is capable of being patented). Your invention must:
- Be novel; and
- Involve an inventive or innovative step; and
- Be for patentable subject matter
Australia is one of only a handful of countries that has a two-tiered patent system. As a result, when filing a complete patent application in Australia, you can elect to apply for either a ‘standard patent’ or an ‘innovation patent’. To obtain standard patent protection, an invention must be both different (i.e. novel) and inventive over (i.e. non-obvious) existing technology. On the other hand, an innovation patent is designed to protect inventions that represent relatively minor improvements on existing technology that may not necessarily meet the inventive step threshold of standard patents.
There are some key differences between a standard patent and innovation patent. You should consider which vehicle of patent protection is more suitable to your invention as well as your commercial needs.
The registration requirements for the two types of patents are very similar. However, a standard patent requires the invention to involve an ‘inventive step’ whilst an innovation patent requires the invention to involve an ‘innovative step’. These two tests present slightly different hurdles.
Your invention will involve an inventive step unless the invention would have been obvious to a person skilled in the relevant field in the light of common general knowledge alone, or in combination with one or more prior art documents. This can be a very difficult test to satisfy, depending on both the invention and the state of the art in a particular technology.
Even though the test refers to a single ‘person’, this ‘person’ is a hypothetical ‘non-inventive’ person or group with ordinary skills in that relevant field.
Common general knowledge is information that would typically be available to, or known by, all workers in a particular field.
Your invention will involve an innovative step unless a person skilled in the relevant field (in the light of common general knowledge) would consider the invention only varied from what is already known in ways that make no substantial contribution to the working of the invention. In other words your invention must be different (i.e. novel) to what is already known and those differences must make a contribution to the working of an invention. You should consider applying for an innovation patent when your invention is a relatively small improvement upon the working of an invention that already exists.
In the 2009 case, Dura-Post Pty Ltd v Delnorth Pty Ltd  FCAFC 81  the Court had to consider the patentability of flexible roadside marker posts made of spring steel. The flexibility of the posts prevented them from breaking when they were hit and increased their durability. The Court held that the posts were different (i.e. novel) to existing roadside posts and that the difference (the flexible nature of the posts) contributed to the working of the invention. Therefore, the innovative step requirement was satisfied.
Examination of your application and granting the patent
If you apply for a standard patent, your application must undergo an examination by the Commissioner of Patents before the patent can be granted. The Commissioner will investigate whether your patent complies with the statutory requirements set out in the Patents Act 1990 (Cth). An example of a statutory requirement is whether it is patentable (see beginning of this article).
It may take anywhere from six months to a few years for your standard patent to be granted. The length of time it takes for your standard patent to be granted depends upon the circumstances of your application.
If you apply for an innovation patent, your patent will be granted once the Commissioner of Patents undertakes a ‘formalities check’ of the application. This is not an examination. An examination is not mandatory for an innovative patent, although it can be requested by yourself or anybody else.
An innovation patent can be granted within one month from the date of your application. However, enforceable rights in an innovation patent can only be obtained once the patent has undergone examination and been certified by the Patent Office.
The length that a patent remains in force is determined by a number of factors, including whether the patent application survives examination and whether annual renewal fees are paid to the Patent Office. However, the maximum terms of Australian patents is explained below.
Standard patents have a term of 20 years from the date on which they are filed. If your standard patent is for pharmaceuticals or other therapeutic goods, it may be possible to extend the term of the patent to a maximum of 25 years from filing.
An innovation patent has a term of eight years. As a result, innovation patents may also be an attractive form of protection for inventions (such as electronics or computer-related inventions) that will be obsolete in eight years time.