28 April 2012

Innovation, Provisional - Both?

The innovation patent system allows for the protection of inventions that would perhaps not qualify for the protection afforded by a standard patent. It is quite a remarkable tool for a number of reasons. These include fast grant without substantive examination and the ability to file divisional applications for innovation patents with the benefit of the filing date of the parent standard application. They can be used as a last resort when prosecution becomes difficult and for efficient enforcement. Here are number of posts on innovation patents.

But as with most things in life, timing is critical. You might think that your "simple" invention is ideal for an innovation patent. That doesn't necessarily mean that you should apply for one straight away. This is particularly so if you are still maintaining confidentiality. Why? It has all to do with the manner in which innovation patents are regulated.

Once you have filed an application for an innovation patent, it is not possible to file an application for a standard patent based on the innovation patent application. That means that upgrading the protection to 20 years from the filing date would not be available. This can be a problem if you make improvements or developments that you feel may support a standard patent.

A way of addressing this would be to file both a provisional and an innovation patent application at the same time. Such an approach is often useful, especially when you believe that it may be necessary to enforce your rights soon after you enter the market. However, filing an application for an innovation patent can still be unduly prejudicial to your rights.

As little as 3 to 4 weeks after your application for the innovation patent is filed, it will be granted. This might sound like a good thing. But with that grant comes publication and the novelty of your invention is destroyed. See here for novelty and other requirements. This removes a number of options.

It is possible to file further applications or an international application with the benefit of the date of filing the first application for a patent in any countries that are members of the Paris Convention for the Protection of Industrial Property. It follows that you can file first in, say, Australia. Then you can file in any of the member countries within 12 months and the novelty of your invention will be tested in those countries as at the Australian filing date. It can be very expensive to file in a number of different countries, so this is a way of delaying those costs.

However, you may realise that you need more time to develop the invention and would like to withdraw the application and file a new application. That resets the 12 month deadline, giving you more time. This option would not be available had you filed for and been granted an innovation patent. The early publication of the innovation patent would destroy the novelty and any patent granted on a subsequent application would be invalid.

When should an application for an innovation patent be filed?

Of course, many decisions concerning patent strategy are budget-driven. Innovation patents are granted quickly and only need to be examined if certification is required for enforcement. It follows that an application for an innovation patent would be justified if your budget is tight and you don't envisage further developments and improvements.

However, I do recommend that you consider filing an application for a standard patent at the same time. This need not add significantly to the cost, since the specification for the innovation patent can be used. It should just be a matter of the official fees and administrative charges levied by your patent attorney.

A pending application for a standard patent will allow you to file any number of divisional applications for innovation patents. It can take up to four years for a standard patent to be granted. During that time divisional applications for innovation patents can be used to achieve early enforcement.

On the other hand, if you only have an innovation patent, then there is a limitation on the use of the divisionals. In particular, it is only possible to file a divisional application in the period that commences on the date that the examination of the parent begins and finishes 1 month after the date on which certification of the parent is advertised. For more information see this link.

It may very well be the case that the only real value of the innovation patent is the ability to use it to achieve early enforcement. I am sure that this is not what the drafters of the legislation intended.

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