Australian Innovation Patent to be withdrawn

4 May 2021 in Article


The Australian Innovation Patent is a second-tier patent, which involves a lower inventive threshold, known as innovative step, rather than inventive step. The Innovation Patent will no longer be available after 25 August 2021.

It was introduced in 2001 to replace the Petty Patent, as a means to obtain protection for more incremental inventions, and offers a shorter term of 8 years, as opposed to 20 years for a standard patent.

The bar for innovative step has been shown to be very low, and the Innovation Patent has therefore been used to successfully protect and enforce inventions which would not qualify for Standard Patent protection.

An Innovation Patent application becomes granted shortly after filing, however a granted Innovation Patent is not enforceable until it has been successfully examined (considered by the Examiner to involve novelty and innovative step), after which the patent will become certified.

Examination is only carried out upon request (either by the holder or a third party), thus resulting in lower costs and ‘quick to grant’ process, with applications being granted shortly after filing, rather than waiting years to prosecute, as can be the case with Standard Patents.

A resultant effect of a patent being ‘granted’ without examination is that an innovation patent, even one that would be considered unpatentable, can remain on the register for its entire term, discouraging competitors and being used on promotional material to fairly state that the holder has granted patent rights. So the term ‘granted’ is somewhat misleading, especially to anyone unfamiliar with Australian patents.

This has led to the system being ‘used or abused’ and has been found by the Productivity Commission in 2016 to “not provide net benefits to the Australian community or to the small and medium sized enterprises (SME’s) who are the intended beneficiaries … and that the system imposes significant costs on third parties and the broader Australian community.”

As a result of the Productivity Commission report the Innovation patent is to be withdrawn, and no applications can be filed after 25 August 2021.

Although the withdrawal of the Innovation Patent will remedy some of the issues raised in the report, we will also undoubtedly lose a powerful mechanism to protect particular inventions and the resultant benefits to SME’s.

One type of invention that has faired well with the Innovation system is technology or software patents, the fast paced and rapid development of technology suits the low threshold and rapid grant process of the Innovation System, which would often be stymied by the long periods between the initial application and the date by which a Standard Patent could be enforced.

With respect to software patents, or at least those under classification G06 (Computing; Calculating or Counting) at the time of writing there are 238 Certified (meaning that they have been examined and are enforceable) Innovation Patents on the Australian register.

Of these 238, Apple Inc. (who some of you may have heard of) are the clear leaders with 178, and Xero (accounting software) a distance second with 9. So it can be seen that the Innovation patent has been very suitable for the fast paced ever changing tech world, and has been leveraged successfully by applicants during its time.

Although the death knell has been struck on Innovation patents, there is still time to file applications, and Lord and Company can help you prepare and file an Innovation patent application before they are phased out. If you have an invention you are considering protecting, especially if you are concerned that it may not qualify for a standard patent, the time to act is now.

Holders of Provisional or Standard pending applications should seriously consider whether filing an Innovation application before the deadline might offer a further branch of protection, a Divisional Application could very well include claims which provide a much broader scope than get accepted on the Parent Standard Application, which also provides a quicker means to remedy in the meantime.

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