The End of Innovation Patents in Australia?

By Peter Huntsman, Director of Patents & Designs, Marquette IP


Australia’s second-tier patent system, the innovation patent, has been in the IP news for the last few years, at least ever since the Productivity Commission recommended the abolition of the system on what some might consider questionable economic grounds. The Australian Federal Government accepted this recommendation over two years ago, but the abolition was resisted by many parties including major industry groups and the Institute of Patent and Trade Mark Attorneys of Australia (IPTA). As a result of this resistance, the abolition was put on hold while the Government and IP Australia conducted further enquiries into the needs of the group that the innovation patent system was originally designed to benefit: small and medium-sized enterprises (SMEs).

IPTA’s efforts established that innovation patents are important for protecting incremental and less substantial innovation. However, the Senate Committee making the further enquiries recommended that the Bill including the abolition of the innovation patent be allowed to pass and the Bill has passed the Senate and is awaiting debate in the House of Representatives. The Committee’s own Report included concerns at its conclusions from the Centre Alliance Party and Labor Party members, which it would appear have been ignored.

Should the abolition move be successful, there will be a very limited timeframe for still pursuing innovation patent protection. Anyone who is contemplating filing an innovation patent application is strongly recommended to act without delay, as there is currently no alternative proposed by the Government beyond the more difficult and more expensive to obtain a standard patent.

To assist those who may be contemplating the option of filing an innovation patent application it will be helpful here to refresh memories on what the innovation patent system provides.

The Innovation Patent

The innovation patent system was introduced in 2001 as an option for protecting innovations that may not meet the inventive step threshold of Australia’s standard patent system. It is similar in some respects to the utility model protection available in some other countries but also has important differences. To summarise, an innovation patent:

  • Can be directed to any of the subject matter for which a standard patent may be granted, except plants and animals and biological processes for the generation of plants and animals – unless the subject matter is a microbiological process or a product of such a process, which is acceptable;
  • Can be filed as a divisional application of a standard patent application;
  • Can be granted very quickly and at relatively low cost;
  • Will be granted without any substantive examination, but if the innovation patent is to be used in any way after being granted, it must first be certified by way of a post-grant examination;
  • Can only be certified with up to 5 claims, all or at least one of which may be independent;
  • Must define an innovative step. That is, the claims after certification must define an improvement over the prior art that makes a substantial contribution to the working of the claimed subject matter;
  • Is granted for a maximum term of 8 years;
  • Can exist alongside a standard patent provided Australia’s relatively low threshold for double patenting is satisfied.

The innovative step has been tested in the Courts on several occasions and has proven to be relatively easy to satisfy, meaning that certified innovation patents have been difficult to invalidate and may be a potent tool for owners – at least for now.

As we at Marquette IP keep an eye on updates, we’ll be sure to share any news with our clients and associates.

For more information on our patent services, simply get in touch.