The end is nigh for innovation patents – 30 November 2017
The Australian innovation patent is an 8 year patent for which there is no inventive step requirement. Routine technical developments can be validly covered (more).
In August 2015 we published ‘The death knell for the Australian innovation patent?‘. Since then the anti-innovation-patent sentiment has continued to mount. Almost certainly, innovation patents will be phased out in the coming years.
IP Australia (aka the Australian Patent Office) has released draft legislation for phasing out the innovation patent (see here). The draft legislation protects:
- the rights of those who hold innovation patents; and
- the rights of those who have the right to file for an innovation patent based on a patent application filed prior to the commencement date of relevant provisions.
It appears likely that:
- divisional innovation patents can be filed for years to come; although
- no ‘new’ innovation patent can be filed after about July 2019; and
- the last innovation patent will likely expire by about July 2027.
Submissions on the draft legislation can be made up until 4 December 2017. Then the legislation will be presented to Parliament and may well be passed during Parliament’s winter sitting in late June 2018. If so, the legislation will likely receive Royal Assent in early July 2018.
According to the draft legislation, the relevant provisions will commence 12 months after Royal Assent – i.e., the commencement date will likely be about July 2019. Those provisions will require:
- innovation patents to have a patent date prior to the commencement date; and
- each claim of an innovation patent to have a priority date prior to the commencement date.
A patent’s date is typically the earliest of its filing date and the filing date of its earliest divisional predecessor (e.g. filing an international patent application (PCT) can establish the patent date of a subsequent innovation patent). An innovation patent’s 8 year term is calculated from its patent date.
Innovation patents are an important part of the Australian patent landscape and will remain so for years to come. They are being phased out in part because they are too pro-patentee. Until they are gone, patentees should use the innovation patent system to its fullest. It may well be prudent to ensure that suitable applications are filed prior to the commencement date to at least preserve the option of filing for innovation patents in the years to come.
