With the commencement of the Intellectual Property Laws Amendment Act 9 of 2020 on 26 February 2020, the timeline covering the long and slow demise of the Innovation Patent in Australia has finally been set.
The relevant deadline is 25 August 2021. If applicants are interested in obtaining innovation patent protection in Australia they will, by this deadline need to file:
- An Australian innovation patent application
- a standard Australian application, or
- a PCT application designating Australia.
In the case of options 2 and 3, one or more divisional innovation patent applications can be filed at any stage off the standard Australian application or the National phase entry on the PCT application. As innovation patents have a lifespan of eight years from the earliest filing date in Australia, the upshot is that innovation patents will effectively cease to exist as from 25 August 2029, when the last innovation patents expire.
In this regard it is important to note that applicants may still have the option of filing divisional innovation patents between 25 August 2021 and 25 August 2029, provided they are descended from a parent/grandparent application with an effective filing date on or before 25 August 2021. In any one case the ability to file an innovation patent application will depend on when the 8 year term from the effective date expires.
Despite their shorter term and limited number of claims, innovation patents have significant advantages over standard patents. The inventive step requirement of standard patents is replaced by a far lower innovative step threshold, which has been likened to a modified novelty test, in which the innovative step needs to make a substantial contribution to the working of the invention. Innovation patents are also not subject to pre-grant oppositions, and can prosecuted through to certification in as little as 4- 5 months. The relief that can be obtained is identical to that of standard patents.
Applicants would be well advised to take advantage of innovation patents while they are still able to, at least by ensuring that they meet one of the three above-mentioned conditions before the 25 August 2021 deadline, including as a preparatory step the filing of priority applications. We will be sending additional reminders closer to this deadline. In the meantime if you have any queries please feel free to contact FPA.
