The innovation patent is Australia’s second-tier patent right, which has existed since 2001. It differs from a standard patent in that it has a shorter term (eight years instead of 20), has a lower inventiveness standard (‘innovative step’ rather than ‘inventive step’), has a five-claim limit, can be granted rapidly following only a formalities review, is not subject to any form of pre-grant opposition, and need not be subject to substantive examination (although it must be examined and certified before it can be enforced against any accused infringer).In recent years, the innovation patent system has been under a cloud, with a number of forces assembling arguments and evidence in support of its abolition. Legislation was recently drafted and published for public consultation including provisions that would, if enacted, result in a phase-out of the innovation patent. However, at the last minute these provisions were removed prior to introduction of the legislation to the Australian Parliament.
If, as still seems most likely, the innovation patent is to be abolished in the near future, this seems to be an opportune time to review its short, but eventful, life.
Prehistory – the Rise and Fall of the Petty Patent
Before the innovation patent, Australia had a secondary patent right called the ‘petty patent’. Petty patents were originally introduced in 1979, and they differed from standard patents in that they had a shorter term (up to six years), could include only three claims, were faster to obtain, and were not subject to a pre-grant opposition process. However, they required exactly the same level of inventiveness as a standard patent, and could not therefore be used to protect any invention that could not otherwise be protected by a standard patent. Unsurprisingly, petty patents came to be used primarily as a tool for strategic patent enforcement.In 1994, the Australian Government decided to review the petty patent system, in response to recommendations made in a report to the Prime Minister's Science and Engineering Council (PMSEC), The Role of Intellectual Property in Innovation. In July 1994, the Government referred the petty patent system to a relatively new panel, the Advisory Council on Intellectual Property (ACIP). The resulting review of the petty patent system was (somewhat ironically, as we shall see) ACIP’s first major inquiry.
In August 1995, ACIP published its report on the Review of the Petty Patent System, in which it recommended that the petty patent be abolished and replaced with a new system in order to fill a perceived gap between registered design rights and standard patent protection. Among a number of other differences from the petty patent system, the ‘innovation patent’ proposed by ACIP would be a true ‘second tier’ right having a lower ‘inventiveness’ requirement, and which would therefore enable innovators to obtain protection for lower-level innovations that might not otherwise qualify for standard patent protection.
Tags: Australia, History, Innovation patent
Subtitle parodies of the pivotal ‘breakdown’ scene from Oliver Hirschbiegel’s 2004 film Der Untergang (‘Downfall’) are so 2008!
Do you know who ‘owns’ your inventions?
It is actually not that easy to imagine a world without patents. At least, not if you really try. If you are the kind of person who is generally opposed to patents, or who thinks that the patent system is fundamentally ‘broken’, you might suppose that you can easily imagine a world without patents. And you might imagine it as some kind of utopia: no software patents, no ‘business method’ patents, no gene patents, no patent trolls, no ‘FRAND abuse’, no Apple v Samsung v Oracle v Google v Motorola v Microsoft v HTC v …
