Patent attorneys are routinely asked by their clients for input as to where patent protection should be pursued. That decision involves weighing up what is to be gained against the relative costs and difficulty.
On any measure, the Australian innovation patent is excellent value. There is much to be gained from Australian patent protection. Australia has the 13th largest economy in the world and a westernised consumer culture which makes it an excellent test market for products intended for launch in North America and Europe. Energy, agriculture, mining, oil & gas and medical devices are all well-established industries.
Innovation patents have an eight year term during which they provide the same scope of rights as standard patents. Indeed typically broader claims are sustainable because there is no need for an inventive step: An innovation patent can validly cover an obvious combination of well-known features. Instead of an inventive step, an innovative step is required. Typically any functional novel feature will suffice.
The application process could not be simpler or more cost effective. Typically a patent is granted on an application within a few weeks of filing. Grant enables innovators to legitimately market their product as patented. Post grant examination is usually optionally but must be passed before the patent can be enforced or threats of enforcement can be made.
The official application fee is only A$180. At the time of writing that is about US$140 or about €120. Typically there are no further charges until modest annuities commence on the second anniversary of the filing date.
An innovation patent application can be:
- a stand-alone application;
- a convention application;
- a divisional application;
- in effect, a national phase application – an innovation patent application can claim divisional status from an international patent application if it is filed by the 31 month PCT deadline; and/or
- obtained by conversing a standard application.
In many ways, the innovation patent is akin to the utility models available elsewhere, although there are no restrictions on the applicable subject matter (aside from a few exceptions that are rarely applicable). There is no restriction on the number of claims at filing although examination (which is usually optional) will require restriction to a total of five claims.
Innovation patents were intended to provide a simple, low cost, option for small to medium business but are available to all and are now routinely used as litigation tools. If one finds that their pending Australian standard patent application has been infringed it is now standard practice to file (and request examination of) an innovation patent application as a divisional application and to litigate on the basis of the resultant innovation patent.
- leads to enforceable rights sooner;
- leads to a ‘stronger’ patent by eliminating the risk of an inventive step attack;
- avoids pre-grant opposition procedures applicable to a standard patent application and which an alleged infringer might use to at least significantly delay proceedings; and
- leads to a better prospect of recovery damages for past infringements.
‘4’ is especially surprising – case law suggests that damages may be payable in connection with infringing acts occurring as early as the filing date of the standard patent application (i.e. the divisional parent application). An innovation patent can be infringed before it is filed!
If reading this causes you to think that innovation patents are unfairly pro-patentee you are not alone. Many, including the Australian government, have said as much. Nonetheless innovation patents remain a valuable to tool to be used by innovators with an interest in the Australian market.
Ben Mott – Principal
Mechanical Engineer & Patent Attorney
Level 27, 101 Collins Street, Melbourne, VIC, 3000, Australia
+61 3 9819 3808