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Australia's new Innovation Patent system.

From 24 May 2001, it will be possible to file an application for an "Innovation Patent" in Australia.  This ought to be beneficial to many potential patent applicants as the overall costs associated with most applications will be favourable.  The system will be of particular benefit to those who might make incremental developments to an invention, where each development does not necessarily display an "inventive step" over the previous commercialised (or otherwise published) stage.

The Patents Act 1990 will be amended by the Patents Amendment (Innovation Patents) Act 2000 which received assent on 24 November 2000.

The new system will replace the Petty Patent system.  Although existing Petty Patents will remain on the register, no new Petty Patents will issue after the commencement date.

An Innovation Patent will have a term of 8 years, with renewal fees payable at each anniversary after filing.

A total of 5 Claims will be allowed.  Unlike the Petty Patent system that allowed only 3 claims, Claims 2 to 5 of an Innovation Patent can be independent.

The claims must define an invention having an "innovative step" when compared to the prior art base.  This is less stringent than the "inventive step" required for a standard patent (and as required for a Petty Patent).  New Section 7(4) of the Patents Act will require that for an Innovative Step, the invention must make a "substantial contribution to the working of the invention".

Importantly, the prior art base will be the same as that from which the claims of a standard patent must distinguish.  ie.  printed publication anywhere in the world and 'use' in Australia.  However, the level of "invention" is lower.

After filing, a formalities check will be performed by the Patent Office.  A report setting a response deadline will issue if there is an informality in the filing.  Once any informalities are overcome, an application for an Innovation Patent will be classified, accepted and granted without substantive examination.  An "A" publication will occur and most Innovation Patents will simply remain on the register subject to annual renewals.  However, such patents are not enforceable.

At any time after grant, the patentee or a third party can request examination.  This can lead to either revocation or "Certification" of the Innovation Patent.  Only a Certified Innovation Patent will be enforceable.

A certified Innovation Patent will be given a "B" publication.

An application for an Innovation Patent filed after the new system comes into effect on 24 May 2001, can be associated with a Provisional Application, or claim priority from an application filed in a Convention Country up to 12 months prior to the Innovation Patent filing date.  It will not be possible to specify an Innovation Patent in an International Patent Application, but a standard application can be converted to an Innovation Patent Application after national phase entry.

What kinds of invention are covered?

Innovation patents may be granted for the same range of subject matter as a standard patent, except for:

  • plants and animals
  • the biological processes for the generation of plants and animals

Microbiological processes and the products of microbiological processes are however patentable.

What is the level of invention required?

Unlike the petty patent which it replaces, the innovation patent may have a lower level of invention than the standard patent. Instead of an "inventive step" over the prior art, the invention need only exhibit an "innovative step." An invention will be taken to involve an innovative step unless it varies from the prior art only in ways that make no "substantial contribution to the working of the invention".

The latter words derive from a body of Australian case law relating to novelty in connection with standard patents, including the 1938 High Court case Griffin v Isaacs, but have mainly appeared in decisions of the Australia Patent Office. The patent office has in the past interpreted the phrase to be satisfied where the patent claim includes a feature which has the effect that the invention exhibits an advantage over the prior art, or works differently.

The standard of novelty, as distinct from inventive level, will be the same as the present requirements for a standard patent.

What are the requirements for the lodgement of an application for an innovation patent?

As for a standard patent, a patent specification describing the invention, but with a maximum of five claims defining the invention. Any number of these claims may be independent, so unlike a petty patent, multiple aspects of the invention can be covered: for example both method and apparatus claims may be included.

Are applications examined?

There is no examination of applications before grant other than a check of formalities. Examination may be requested at any time after grant, by the patentee or a third party. At the successful conclusion of examination the innovation patent is "certified". The patent must be certified before it may be enforced, and before revocation may be sought.

Is Opposition available?

Post-grant opposition is available, and if successful will result in the revocation of the innovation patent. Opposition can only be lodged after an innovation patent has been certified following examination.

Halford & Co.

December 2000.

Patent and Trade Mark Attorneys - Intellectual Property Specialists
 Halfords IP, Level 7, 1 Market Street, Sydney, NSW, 2000, AUSTRALIA T: +61 2 9264 8388 | F: +61 2 9264 1810