E-News No.45

E-News No.45

Australian Innovation Patents by Andrew Massie (Phillips Ormonde Fitzpatrick – Australia)

The Australian Advisory Council on Intellectual Property (ACIP) issued a Consultation Paper in August 2015 in which it made a recommendation to the Australian Government to consider abolition of the current Australian Innovation Patent System. AIPPI Australia responded to the Consultation Paper in support of maintaining the Innovation Patent System but in a modified form.

Innovation patents in Australia have similarities to Utility Models elsewhere. Innovation patents have a maximum term of eight years from filing and have a maximum of five claims. An innovation patent is not automatically examined, but must be examined before the patent can be used to threaten or initiate legal proceedings.

The current Innovation Patent System was introduced by the Australian Government in 2001 and replaced the previous Petty Patent System. The Petty Patent System was rarely used and one reason for this was that Petty Patent System had a similar inventive threshold to that of a standard patent so that there was little incentive to seek a Petty Patent over a Standard Patent. Compared to the use of the Petty Patent System, the Innovation Patent System has been far more popular.

Australian practitioners generally agree that the Innovation Patent System unfairly favours Patentees in terms of the very low threshold for innovative step that is required for innovation patent validity. In a practical sense, the test for validity is a novelty test only. Indeed, an innovation patent can validly protect an innovation that is novel but obvious. In the response to the Consultation Paper, AIPPI Australia argued that complete abolition of the Innovation Patent System was premature and that a modified form of the system should be trialled before abolition was considered.

A critical modification to the Innovation Patent System is to raise the level of innovation required for a valid innovation patent. The level should be less rigorous than that applied to standard parents but more rigorous than the present standard. This should correct the deficiency that a novel but obvious innovation could be validly protected, and would thus provide better balance between the rights of innovation patent owners and those of competing third parties. Other recommendations that AIPPI suggested included:

  • Compulsory examination at some stage in the life of an innovation patent;
  • Changes to the terminology to distinguish between an uncertified (unexamined) innovation patent relative to a certified (examined) innovation patent; and
  • Modifications to the relief offered by an innovation patent, such as providing no possibility for a preliminary injunction and/or a compulsory licence as a first right of refusal prior to an injunction.

The Australian Government is still considering the Consultation Paper and submissions made to that Paper (including the AIPPI submission) and a response from the Government is expected later in 2016.