September 09, 2021

Australia eliminates the innovation patent

In 2001 the Australian IP Office began accepting applications for innovation patents, providing an alternative route of protection to a standard patent, particularly for inventions with a shorter market life. Since 2020, the innovation patent has been in the process of being phased out in the jurisdiction, and as of August 26, 2021, such applications are no longer accepted by the IP Office. Any existing innovation patents will remain in force until the expiry of their 8-year validity term, whilst those filed on or before August 25, 2021 will be subject to the usual registration process.

Furthermore, any standard patent applications filed prior to the cut off date may be converted to an innovation patent if the applicant so wishes. Applications for divisional innovation patents can still be filed after August 25, 2021, so long as the parent application was filed on or before the aforementioned date. There is no possibility for extensions of time for late filings of innovation patents.

In the absence of the option to file for an innovation patent, a potential alternative would be to protect an invention under a standard patent registration in Australia. A standard patent does, however, have more stringent requirements for protection as it requires applicants, inter alia, to prove an "inventive step" as opposed to the less onerous requirement of an "innovative step" for innovation patents.

A provisional application may also assist in the absence of innovation patents, by partially protecting an invention for a period of 12 months whilst an applicant decides whether to proceed with the application for full protection, establishing a priority date for the invention.

The move to eradicate the use of the innovation patent in Australia was implemented as part of the commitment by the Government to ensure that Australian small and medium sized enterprises (SME's) are adequately supported by the jurisdiction's IP system. As per IP Australia, the innovation patent not only cost a considerable amount for all Australian businesses, but allowed larger enterprises in the country to monopolise on innovation and prevent SME's from obtaining patent protection. Furthermore, the fact that innovation patents were not recognised or protected overseas was considered a risk for Australian inventors.

It is hoped that the elimination of innovation patents in Australia will encourage a higher level of benefit for SME's, as well as harmonize the Australian IP system with those of the most prominent IP jurisdictions and thus incentivise research and innovation.

Author: Danielle Carvey