[Update at April 2017 – see our recent post Australian Innovation Patents Retrospectively made Non-Retrospective here.]
When embarking on a multi-national patent strategy, Australia should always be one of the countries considered. As we have previously written (here):
“On any measure, the Australian innovation patent is excellent value… Australia has the 13th largest economy in the world …. Energy, agriculture, mining, oil & gas and medical devices are all well-established industries”.
Innovation (8 year) patents can have an important role to play in any Australian patent filing strategy. They can be pursued as standalone protection or alongside a standard (20 year) patent (or patent application), and standard patent applications can be converted to innovation patents (but not vice versa). If Australian patent protection is of interest filing innovation patents may well be appropriate:
- When faced with lack of inventive step objections (e.g. in an International Search Report (ISR)) – innovations patents require an innovative step rather than an inventive step. This is a much lower standard. Essentially any functional point of difference will suffice.
- If and when an infringement appears in the marketplace – as long as an Australian standard patent application remains pending a divisional patent application for an innovation patent can be filed. Typically this is preferable over simply expediting the examination of the standard patent application.
- As an additional layer of protection when a standard patent application is accepted – having an innovation patent on hand will significantly improve the patentee’s position in respect of any infringing acts occurring during the 8 year term of the innovation patent.
- If the costs of prosecuting a standard patent application are no longer warranted – instead of abandoning the standard patent application, conversion to an innovation patent may be appropriate. Innovation patents are not substantively examined as a matter of course. Typically, maintaining an innovation patent requires only the payment of modest annuities.
By working with your Australian patent attorney to creatively exploit the innovation patent system it is often possible to secure much broader patent protection than is available in other jurisdictions and at a cost much lower than you might expect.
Further reading:
– Why extend your clients’ IP rights into Australia?
– The Australian innovation patent
Ben Mott – Principal
Mechanical Engineer & Patent Attorney
Level 27, 101 Collins Street, Melbourne, VIC, 3000, Australia
+61 3 9819 3808
