Updated 28 February 2020
The proposed Bill to phase out the innovation patent system has passed both houses of Federal Parliament and was awaiting Royal Assent (in layman terms – becoming law).
Now, the Bill has received Royal Assent and is now law under the Patents Act 1990. We advise the following critical dates which set the process of phasing out the innovation patent system.
As of 26 August 2021, Applicants will no longer be able to file an innovation patent application. This will then set a date of 26 August 2029 for the expiry of all innovation patents. However, it is important to note that Applicants can still convert a standard patent to an innovation patent or file a divisional innovation patent, if the standard patent was filed before 26 August 2021.
Timeline: Australia's Innovation Patent System
We provide the following timeline for ease of explanation.
Australia’s innovation patent system, a second-tier patent application process that was initially introduced to stimulate innovation amongst small and medium-sized enterprises (SMEs), is set to be phased out by August 2021.
Following the recommendations of the Productivity Commission and ACIP, the Government has opted to scrap the system, rather than amend it. The decision echoed the findings that the system was unlikely to provide net benefits to the intended beneficiaries (SMEs) or the Australian community.
The Government is of the opinion that more targeted assistance may better assist SMEs, which is why proposed amendments to include a review of the accessibility of the patent system for SMEs were also accepted.
So, what does this mean for inventors and businesses?
Small and medium-sized enterprises and innovators will be affected by this decision the most. The short-term innovation patent system is a faster and cheaper way for small and medium-sized enterprises to initially protect themselves from competitors copying their inventions. By August 2021, this will no longer be an option. However, any innovation patent applied for prior to the August 2021 deadline still has a potential term of 8 years from the date of registration.
At Wynnes, we are advising our clients and associates to consider taking advantage of the innovation patent system, while it is still available.
The benefits of applying for an innovation patent:
- An innovation patent application is a complete patent application that has a potential term of 8 years.
- The application proceeds to Grant after it is filed without being examined.
- Suitable inventions for an innovation patent application are inventions that have a relatively short commercial life span or anything else that has a minor but commercially significant improvement to an existing product.
- An innovation patent is typically granted within 4-8 weeks, so you can obtain a patent quickly to begin marketing your product to potential licensees and investors.
- If you believe someone might be copying your invention, you can request expedited examination of your innovation patent and claim infringement.
To be eligible for an innovation patent application, your invention must:
- Be novel (be new). What this means is that the invention has not been publicly disclosed in any form, anywhere in the world before the earliest priority date (date at which the application is first filed); and
- Involve an innovative step. Which means the invention is different from what is known before and the difference makes a substantial contribution to the working of the invention. An innovative step is different to an inventive step (which is needed for a standard patent application).
Considering other options?
Other options that are beneficial to small and medium-sized enterprises and inventors, include:
Provisional Patent Application
Provisional patent applications are a great option for small and medium-sized enterprises and inventors. Not only are they inexpensive, but they can give you the earliest possible priority date. A priority date is the date on which you first filed a patent application that described your invention in detail.
The provisional patent application gives you up to 12 months to consider your options before deciding to proceed with a patent application which can eventually provide you with the protection of a full patent.
The best way to look at a provisional patent application is to think of it as a place holder - it is confidential, and your invention is not published until you file for a full patent application.
Seek Professional Advice
It is important to engage a qualified patent attorney to discuss the eligibility of your invention for the innovation patent application. At Wynnes, we offer a free initial consultation and as Patent Attorney’s we ensure any information that you provide about your invention remains confidential.
Outlining some of the key factors that can help or hinder Australian businesses expanding into overseas markets.
“Play to your strengths”, “Innovate” and “Think outside the box”, are all concepts we understand in theory. But, how do we convert these business concepts into business assets? More importantly, how do we protect those assets?
To discuss if an innovation patent application is beneficial for your invention speak to one of our Attorneys
We are happy to discuss your situation with you in person, over the phone, via email or web chat. We are here to listen, provide assistance and help you protect your important IP assets in Australia and overseas.
We also have a short attorney FAQ guide to assist you in preparing for the initial meeting and make it more valuable for you.
Your first consultation is free of charge.
WHAT OUR CLIENTS SAY
"Ewen [Wynne] was super helpful. Our first meeting was 2 hours long and he always said that if I had any questions that I could call him"
“Ewen just made the process easy. He explained things well and it wasn’t too complicated to understand”.
"I felt so comfortable with Philipp and with the team at Wynnes, that I didn’t need or want to go anywhere else for IP advice and protection."
"A friend of mine strongly recommended to see Ewen. As soon as I met with him and started discussing my idea, I knew that I was in capable hands."