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Australia's innovation patent system is ending soon. For patent applicants, there's still time to take advantage of the system - you just need to act quickly. 

The sun is quickly setting on Australia’s innovation patent system, with the 25 August 2021 deadline to file applications fast approaching. 

In this article, we look at the key aspects of the innovation patent phase-out process, what options are still available to you, and provide a refresher on what an innovation patent is. 

In brief: What you can do now
  • Consider accelerating the filing of complete (non-provisional) applications in Australia by 25 August 2021. This allows you to keep open the option of using the innovation patent system from 26 August 2021. The complete patent application may be a direct filing in Australia or may be an International (PCT) patent application designating Australia.
  • The innovation patent system provides significant tactical advantages for patent owners and the “phase out” period will extend for a maximum of 8 years. As such, keeping open the possibility of using the innovation patent system is an important strategic option to consider.
  • A “dual track” filing strategy can be implemented to allow the maximum term (20 years plus 12 month convention period) even if a complete filing is accelerated in Australia to meet the 25 August deadline.

 

What is an innovation patent?

Australia currently has a two-tier patent system: standard patents and innovation patents. Innovation patents were introduced in 2001 to encourage businesses to protect their innovations. We break down the differences between the two systems in this table:
  

Standard patent
 Innovation patent
20-year term

8-year term 

Must involve inventive step  Must involve innovative step
Application > Examination > Grant  Application > Grant (streamlined)
Unlimited claims  Maximum 5 claims
Enforcement after grant  Enforcement after certification

   

The innovation patent system offers a number of advantages for applicants:

  • Lower threshold for patentability: While standard patents require an inventive step, innovation patents only require an innovative step.
  • Innovation patents can be filed for the same subject matter as standard patents.
  • An innovation patent provides the same rights as a standard patent.
  • Innovation patents and standard patents may coexist for the same invention (as long as there is a difference in respective claim scope).

Innovation patents provide very robust patent protection even for subject matter that would not support a standard patent, and can therefore be a critical part of a successful infringement action.  The innovation patent process (which is streamlined and does not include any pre-grant opposition) is also a very effective mechanism to secure rapid grant for enforcement 
 

How will the innovation patent phase out work?

The phasing out of Australia's innovation patent system officially commences on 26 August 2021. For patent applicants, this means there are key dates you need to be aware of:

  • New innovation patent applications, or standard applications on which an innovation patent may be based, must be filed no later than 25 August 2021.
  • New innovation patent applications submitted on or after 26 August 2021 will not be accepted.
  • Existing innovation patents and innovation patent applications filed on or before 25 August 2021 will continue in force until they expire.
  • A standard patent application can be converted to an innovation patent application after 26 August 2021, as long as the standard patent application was filed on or before 25 August 2021.
  • It will also be possible to file a divisional innovation patent application from a standard patent application that was filed on or before 25 August 2021.
  • By 26 August 2029, all innovation patents will have expired.

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What the end of innovation patents means for you

Whether you have an existing innovation patent, are considering filing for an innovation patent, or want to keep your options open for filing an innovation patent during the phase out period, there are key deadlines and facts that you need to be aware of. We break it down in this set of FAQs. 

Can I still file an innovation patent application?

Yes, you can file an original innovation patent application until the deadline of Thursday 25 August 2021 (AEST). 

Can I apply for an extension?

No, there are no avenues available to apply for an extension, or to file late applications. 

What if I already have an innovation patent or have previously filed an application?

All innovation patents and innovation patent applications filed on or before 25 August 2021 will continue in force until they expire.

Are there any other options available to me after 26 August 2021?

Yes, there are two alternate options available for you to take advantage of the innovation patent system after 26 August 2021 - but you still need to act before 25 August 2021:

  1. Standard patent application conversion: A standard patent application can be converted to an innovation patent application from 26 August 2021, as long as the standard patent application was filed on or before 25 August 2021.
  2. Divisional innovation patent application: It will also be possible to file a divisional innovation patent application from a standard patent application, so long as that was application was filed on or before 25 August 2021.

Should I file an innovation patent application now? If so, what do I need to do?

You do not need to file the innovation patent before 25 August 2021 provided that you have filed a standard (non provisional) patent application in Australia by that date. By doing so, you will keep your option open to file the innovation patent after 26 August. The standard patent application may be a direct filing in Australia or may be an International (PCT) patent application designating Australia.

The innovation patent filing may be subsequently based on the standard patent application (as a divisional application or by conversion). One of the key strategic advantages of the innovation patent system is to provide rapid grant and robust protection in enforcement proceedings and this advantage will remain whilst the standard patent application remains pending.

If the invention has a short life cycle or is incremental (such that it would not be eligible under a standard patent), then you should consider filing of the innovation patent directly before 25 August 2021. This will simplify the patenting process and be more cost effective.

Can I still maximise my patent term if I accelerate my complete patent filing to meet the deadline?

Yes, by adopting a “dual track” strategy where you file a first standard patent application by 25 August 2021 to form the basis of an innovation patent filing during the phase out period whilst that standard patent application remans pending.

A second standard patent application can be filed subsequently closer to the 12 month priority deadline to ensure the maximum term of the patent is retained. Steps would need to be taken to avoid a “double patenting” objection but these can be managed by keeping the first patent application pending.

 

Key takeaways
  • If you want to take advantage of Australia's innovation patent system, you need to act soon. 
  • New applications must be submitted by 25 August 2021 (AEST). 
  • Existing innovation patents and applications submitted on or before 25 August 2021 will continue in force, expiring at the end of their 8-year term.
  • You should consider accelerating your complete (non-provisional) patent application filing in Australia before 25 August 2021. 
  • Griffith Hack is here to help. If you have further questions or are unsure what the best steps to take are, please contact the Griffith Hack team who can take you through your options to ensure that you extract maximum value from the innovation patent system while it lasts.

 

    

Our Experts Project Team

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