04 May 2005

What IPAustralia never told you about Innovation Patents

A number of years ago, we adopted the innovation patent system. This was in response to an alleged call from industry groups that it was both too hard and too expensive to obtain a standard Australian patent.

Anyway, the innovation patent system appears to be a mechanism that people can use to get a patent quickly. In fact all you need do is make sure the minimal formalities are met and, hey presto, you get a nice shiny patent deed. So now you can stop people from copying your invention. Not so fast...

I won't bore you with the relevant statutes, but our Patents Act sets out that an innovation patent is only enforceable once it has been certified. This requires that you request examination of the innovation patent. Examination is carried out to determine whether or not the invention (or, more correctly, the innovation) is "novel" and "makes a contribution to the art". Phone your patent attorney if you need further information as to what these mean. The important thing for the purpose of this discussion is that the innovation patent is really toothless until you subject the innovation patent to an examination.

If you pass the examination, well and good. You get the certificate and you can send out your letter of demand. However, if you fail the examination, the patent is revoked and you have nothing. Fortunately, examination can be requested at any time, so perhaps the existence of the innovation patent will manage to scare off potential infringers (yeah, right...).

A danger for holders of uncertified innovation patents lies hidden in the Patents Act. If you send a letter of demand to an infringer based on such an innovation patent, you could find yourself on the wrong end of a legal suit. So you need to make sure that you actually do have grounds to make threats.

In my view, the absolute biggest drawback with innovation patents is that they are published as soon as they are granted, which could be in one month from the date of filing. This has implications. You may come up with some significant improvements or developments to your innovation which may warrant the expense of filing a standard patent application. Unfortunately, you cannot file a standard patent application based on an innovation patent application. Thus, you may have to file a new application. You then will lose the benefit of the earlier date of the innovation patent. Worse, the scope of the subsequent patent application cannot encompass the material in the innovation patent, since that material would no longer meet the necessary novelty requirements due to publication of the innovation patent.

You must make sure that you file a provisional patent application together with the innovation patent application. The subsequent application covering the improvements and developments can then be based on the provisional, with the benefit of the provisional filing date. The extra cost is $80 only since the specifications of both applications can be the same.

If your patent attorney is not suggesting that you file both, then you should ask why or run away or both.

I cannot understand why IPAustralia does not have bold warnings about the potential shortcomings of the innovation patent system. Now, where is that letter to the Commissioner I was working on...

2 comments:

  1. Innovation Patents are also being quoted to discredit the patent system internationally where the concept is not understood.

    see http://www.newscientist.com/article.ns?id=dn7213

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  2. There is still hope for those who have not benefited from Barry's advice - to file a provisional patent application with their innovation patent application - and find themselves wanting the extended protection of a standard patent.

    A PCT (Patent Cooperation Treaty) application can be based on an Australian innovation patent application. By nominating Australia as one of the jurisdictions in which (standard) patent protection is sought, an innovation patent can be 'upgraded' to a standard patent.

    Obviously the application must be based on the innovation patent application, and thus the problem of not being able to expand the scope of the claimed invention is not cured.

    A further deterrent is the costs involved in the PCT process.

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