Options for IP Protection after Expiry of the Innovation Patent
Brad Postma and Tatiana Dudina, Spruson & Ferguson (Australia)
The innovation patent system was intended to be a second-tier patent system serving the needs of Australian Small to Medium Enterprises (SMEs). Innovation patents, however, were also used strategically as a highly effective litigation tool. In view of the latter unintended purpose, the Australian Government abolished the innovation patent system.
The decision certainly affects some Applicants considering filing patent applications in Australia. As with any change, the abolition of the innovation patent system may also bring opportunities to adjust intellectual property (IP) strategy and diversify the IP portfolio in Australia.
Transitional arrangements – there is still time!
While the innovation patent system is gone, there are transitional arrangements in place. This means that innovation patent applications can continue to be validly filed from pending complete patent applications which were filed on or before 25 August 2021, subject to meeting other filing requirements. Under Australian law, International PCT applications designating Australia are considered Australian patent applications. As such, it is possible to file a divisional innovation patent application from a pending PCT patent application filed on or before 25 August 2021.
Patents of Addition
Australian legislation additionally features “patents of addition,” which are intended to provide protection for relatively minor modifications or improvements not previously disclosed in the main invention. An Applicant of a pending application or a standard granted patent (“parent patent”) can file a patent of addition at any time during the pendency or term of the parent patent.
The patent of addition is examined and granted after examination and grant of the parent patent, which is disregarded for the purposes of inventive step assessment. The term of the patent of addition is generally aligned with the term of the parent patent and does not require payment of renewals. The patent of addition can become an independent patent if the parent patent is revoked or not extended.
Under Australian law, design protection is provided for the overall appearance of the product rather than functional aspects of the product. In other words, if visual features distinguish the product from existing prior art, i.e., the design is new and distinctive when viewed by “a familiar person,” filing a design application may be considered. Design applications are registered after passing formalities assessment only without undergoing substantive examination. To enforce a registered design, the design application must be examined and certified. The term of protection for a registered design is up to 10 years from the filing date.
Timing for Requesting Examination
Depending on specific circumstances, standard patent protection may still be the right choice for some Applicants. If there is a need to delay the substantive cost of pursuing patent protection, the Applicants may defer requesting substantive examination until a later date. In Australia, an examination may be requested up to 5 years after the filing date or 2 months after a Direction to request examination issues, whichever is earlier. The Australian Patent Office may not issue the Direction until about 56 months from the filing date thus providing the Applicants time to consider whether further costs are justified.
Filing and Drafting Strategies
Under Australian law, it is possible to file a provisional patent application, which establishes a priority date and gives the Applicant 12 months to file further complete applications.
The Australian Patent Office offers a service of conducting an International type search for provisional patent applications to give the Applicants a better understanding of how close the invention is to the prior art. The Australian Patent Office typically provides results of the International type search within 6 weeks after requesting the International type search. The search results can be used to further refine the inventive concept and revise the provisional patent specification before filing a complete patent application in Australia and/or overseas. The original provisional patent application can be formally withdrawn, if needed.
Working with your Australian patent attorney is crucial at this stage to consider the search results and amend the provisional patent specification accordingly in a timely manner to meet the deadline for filing further complete patent applications.
Take away notes
Despite innovation patents becoming extinct, there are still mechanisms to protect innovations in Australia.
As each and every situation is different and requires a complex assessment, we encourage that you to contact an experienced Australian patent attorney who can provide relevant IP advice.
As always, if you have any questions, please do not hesitate to contact us.