Australian innovation patent system approaches the finish line

Article \ 18 Jun 2021

The Australian innovation patent system is being phased out, with key changes taking place on 25 August 2021 (AEST). Steps must be taken before this date to secure an innovation patent in Australia.

This article provides a brief overview of the innovation patent system in Australia, what is happening after 25 August 2021, why the innovation patent system is being phased out, and key action points to note before 25 August 2021.

What is an innovation patent?

An innovation patent is an Australian version of ‘a second-tier patent’. The innovation patent system is designed to protect inventions that may not necessarily meet a higher inventive threshold required for standard Australian patents. They are also not subjected to pre-grant substantive examination and hence innovation patents are granted quickly, usually within a few months of filing. This also means that patenting costs are lower than for standard Australian patents.

Certification (following an examination) of an innovation patent is optional and can be requested at any time during the lifetime of that innovation patent. Usually, voluntary requests for certification of the innovation patents are only requested when the patent is going to be enforced. Because they do not need to meet the higher threshold for inventiveness required for standard patents, innovation patents can survive substantive examinations with a much broader scope of protection than standard patent applications.

Innovation patents can have a maximum of 5 claims (all of which can be independent claims), and they can last for up to eight-years.

What is happening after 25 August 2021 (AEST)?

No new innovation patent applications

All new innovation patent applications must be filed on or before 25 August 2021 (AEST). After that date, it will no longer be possible to file new innovation patent applications.

Existing innovation patents and innovation patent applications filed on or before 25 August 2021 (AEST) can continue to be in force until their expiry. The maximum term of the innovation patents will remain eight years.

Certification of innovation patents can still be requested at any time during the life of the innovation patent.

Divisional innovation patent applications

It will be possible file a divisional innovation patent application from a standard Australian patent application provided this parent patent application has a filing date of or before 25 August 2021. If the parent patent application has a filing date of 26 August 2021 or later, it will not be possible to file a divisional innovation patent application from such a parent.

Conversion to innovation patent applications

It will still be possible to convert a standard patent application to an innovation patent application, provided that the standard patent application has a filing date of or before 25 August 2021. If the standard patent application has a filing date of 26 August 2021 or later, it will not be possible to convert such a standard patent application to an innovation patent application.

Conversion from PCT patent applications

It will still be possible to convert a PCT international patent application (designating Australia) that enters national phase in Australia after 25 August 2021 to an innovation patent application, provided the PCT application has an international filing date of or before 25 August 2021. If the PCT application has an international filing date of 26 August 2021 or later, it will not be possible to convert such a PCT patent application to an innovation patent application.

Why is the innovation patent system being phased out?

The innovation patent system was introduced to support innovation among Australia's small and medium-sized enterprises (SMEs). However, the Australian government seems to believe the innovation patent has failed to meet this objective.

Although many submissions were filed to keep the innovation patent system, IP Australia believes that larger businesses are using the system as a strategic tool to stifle competition. Apparently, big companies have been filing significantly large numbers of innovation patents, making it harder for SMEs to compete by restricting their freedom to operate.

According to IP Australia, phasing out innovation patents is part of the Australian Government’s commitment to ensuring the IP system meets the needs of Australia’s SMEs. 

Key action points

If an Australian provisional patent application or foreign application has been filed and an innovation patent is desired, consider:

  • filing an innovation patent in Australia on or before 25 August 2021, or
  • filing a PCT application (designating Australia) or a complete (i.e. non provisional) standard Australian patent application on or before 25 August 2021 to keep your options alive for converting to an innovation patent application after 25 August 2021.

If a new invention for which a patent application is yet to be filed anywhere, and if the Australian market is of commercial interest to you, consider:

  • filing an innovation patent in Australia on or before 25 August 2021 for the new invention, or
  • filing a standard patent (non-provisional patent application) in Australia, or a PCT application on or before 25 August 2021 for that invention. This will keep your options open for filing the innovation patent later as a divisional or a converted innovation patent application.

Please get in touch as soon as possible if you have any questions or would like any advice around IP strategy in light of these upcoming changes.