The innovation patent is a fast, cost-effective and easy to obtain protection option. It can be useful in supporting the first to marketplace advantage and strategic asset when it comes to enforcing patent rights. It can also reduce some of the financial and commercial risks involved in the research and development of a new invention, and allows each developmental stage of an invention to be protected.
In Australia 2 forms of patent are available – standard and innovation. For a standard patent the maximum term is 20 years, whereas for an innovation patent the maximum term is 8 years. In terms of subject matter though, the innovation patent is available for almost exactly the same type of inventions – the exceptions are plants and animals per se. In this respect, the Australian innovation patent is very different from the Chinese utility model.
Obtaining an innovation patent is less expensive than a standard patent because the innovation patent is not examined for patentability before grant. After filing an innovation patent is “granted” following a formalities examination. This can take place in a matter of weeks and publication then also occurs. A maximum of 5 claims is allowed.
Importantly though, an innovation patent cannot be enforced until a patentability examination has taken place and the patent “certified” by the Patent Office. This is also a rapid process. However, the costs associated with this examination can be avoided until it is desired to enforce an innovation patent. Otherwise examination is not mandatory (although it is possible for third parties to request examination).
The patentability requirements for an innovation patent are lower than for a standard patent. The requirement for novelty is the same but the innovation patent is required to have an “innovative step” rather than an inventive step. The test for innovative step is really a modified novelty test – there is no consideration of inventive merit. Basically, an innovative step exists where the invention as claimed differs from the prior art by a feature that makes some technical contribution to how the invention works. This means for example that an innovation patent can be used to protect relatively minor developments of an invention that has already been disclosed.
Importantly, once certified an innovation patent provides exactly the same rights as a standard patent in terms of the relief available against an infringement (injunctions, damages, account of profits). Further, the same principles of claim construction should apply to an innovation patent as a standard patent.
There is some flexibility associated with filing of innovation patents. An innovation patent can be filed as the national phase of an International patent application or as a divisional application of an existing standard patent application. This means that it is possible for example to have a standard patent application in Australia and when infringement is encountered an innovation patent is filed and pursued to use for litigation purposes. It is also possible to convert a standard patent application into an innovation patent (but not vice versa) and to have a standard patent and an innovation patent to the same invention – provided the claims are not identical.
Innovation patents can be used to protect inventions that would not otherwise meet the patentability requirements for a standard patent. However, their use need not be restricted to such inventions. Indeed, innovation patents are potentially powerful business tools and can used strategically to provide commercial advantage for almost the full range of inventions.
The innovation patent cannot be overlooked as a means for gaining a foothold for intellectual property rights in Australia, and as a potentially powerful and flexible way of enforcing patent rights.
