The Australian Patent Office recently issued two decisions on the examination and certification of innovation patents owned by UK company Diogenes Limited: Diogenes Limited [2023] APO 5 concerning innovation patent no. 2020104437 (‘Diogenes 1’); and Diogenes Limited [2023] APO 8 concerning innovation patent no. 2021103809 (‘Diogenes 2’). Both patents claim inventions relating to electronic pool wagering systems and – unsurprisingly, given this subject matter – both were found to be unpatentable under Australia’s ‘manner of manufacture’ approach to patent-eligibility. However, it is not the substantive reasons for refusing to certify the patents that is of most interest. What is unusual about both patents is that they had each expired before an initial examination report had even been issued. Despite this, IP Australia proceeded with examination, issuing three reports on patent no. 2020104437, and two reports on patent no. 2021103809, before in both cases accepting requests to be heard and issuing the decisions noted above. Just to repeat for emphasis, all of this activity occurred after the patents had expired.
The rationale for proceeding with examination is given in Diogenes 1 at paragraph [10], where the Hearing Officer observed:
It is not usual for the Commissioner to undertake actions on an expired patent. However, I note that, in order for the patentee to enforce their rights in relation to an innovation patent, it is necessary for that patent to be examined and certified. In such circumstances, and noting that the patentee could potentially bring infringement proceedings up to 6 years after expiry (assuming infringement proceedings occurred just prior to the expiry date – see subsection 120(4) of the Act), undertaking examination (and this decision) after the expiry date is appropriate.
I find this statement confusing, and suspect that the Hearing Officer may have meant to suggest that the infringement itself – rather than the ‘infringement proceedings’ – may have occurred prior to the expiry date of the patent. In any event, we will get to the circumstances in which an expired innovation patent, that was not examined and certified within its lifetime, may nonetheless be enforceable.
Diogenes 2 was decided by a different Hearing Officer, who (at paragraph [4]) adopted the reasoning of Diogenes 1 for proceeding with examination of an expired innovation patent.
In the Diogenes cases, examination of the innovation patents was requested while they were both still alive – albeit, as we shall see, just barely! But these decisions raise the question of whether a (former) patentee could request examination of an expired innovation patent and, in such a case, whether the expired patent could be retrospectively certified and enforced up to six years after expiry. If so, then this might apply not only to patents that expired at the end of their maximum eight year term, but also to patents that ceased earlier than this due to non-payment of an annual renewal fee.
The upshot is that zombie innovation patents are able to rise from the dead and reach back in time to capture historical infringements!
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).
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The innovation patent is Australia’s ‘second tier’ patent right. It is granted without substantive examination (but must be examined and certified before it can be enforced), has a maximum term of only eight years, and requires a lower level of inventiveness than a standard patent in order to be valid. Despite this, however, a certified innovation patent gives its owner all of the same rights and remedies against infringers – including injunctions and financial compensation – as a standard patent. And in one respect innovation patents have appeared, since September 2011, to offer a distinct advantage over standard patents in that damages have been held to accrue not just back to the date of certification, or the date of grant, but all the way back to the original effective filing date. In the case of divisional applications, this could be many years before the actual filing and grant dates of the innovation patent. (For more information, see Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] 
In an eight year period – one full innovation patent lifecycle – between 2007 and 2015, Australian residents were overwhelmingly the biggest users of the second-tier innovation patent system, filing over 10,000 innovation patent applications. The next most frequent filers were the Chinese, with just 1500 applications, followed by US applicants with less than 1000. Over 90% of the Australian applicants were individuals or small-to-medium enterprises (SMEs – businesses with fewer than 200 employees), i.e. the exact people the innovation patent system was intended to benefit when it was established by the Howard Government in 2001. Over the same period, Australian residents filed just over 23,000 standard patent applications, a very distant second to US residents who were responsible for 115,000 applications.
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IP Australia has initiated a consultation on the recommendation of the 
