Australian innovation patents offer solution to standard barriers to grant
Published on 19 Feb, 2012
There have been many recent discussions regarding the opportunities offered by Australian innovation patents that are strategically filed as innovation patents at first instance. However, less well known is the fact that the innovation patent system can also provide a very useful and cost effective fall back option during prosecution of your Australian standard utility type patent application. In this regard, a standard patent application can, at any time prior to acceptance, be converted to an innovation patent application, without payment of any official fees. It will then, in most cases, proceed directly to grant, after which it can usually be left unexamined until if and when required for enforcement. As such, the costs from the point of conversion to grant are not significant.
The following sets out a couple of scenarios where there may be cause to look at abandoning a pending Australian standard patent application, and where conversion to an innovation patent application may be a useful option worth considering.
It is not unusual for Corporate applicants with international patent portfolios to abandon all pending applications when unexpected prior art surfaces that is clearly relevant to the obviousness or inventiveness of the subject invention. However, providing the invention is still novel over that prior art, and any difference over the prior art contributes in a “real” and useful way to the working of the invention, it may well pass the significantly lower level test for “innovative step” as required under the Australian innovation patent system. In this regard the case law to date has indicated that obviousness is not a consideration in applying this test. Accordingly, there may well still be an opportunity to obtain valid and robust patent protection in Australia in these circumstances.
Funding barriers and/or change in developing strategy
There may also be cause to consider abandoning pending standard patent applications in Australia if, at the time of review, there is uncertainty as to the future commercialisation opportunities, or a change in the strategy to exploit the subject invention in this jurisdiction. Such a review is often prompted at the examination phase after a direction to request examination issues, where further significant investment in examination and prosecution fees is then required to keep the standard application pending.
However, if at this time it seems there may still be some real or potential commercial value in retaining pending rights, then conversion to an innovation patent is an ideal option, as the granted patent can be left unexamined until if and when it may be needed further down the track, thereby deferring prosecution costs.
While there are surprisingly few restrictions on subject matter or claim type with the Australian Innovation Patent System, particularly as compared with many second tier utility model type regimes in other countries, limitations such as the reduced maximum term of 8 years from the filing date and a maximum of 5 claims, will of course needed to be taken into account when assessing the options discussed above. If you would like more details regarding the Innovation Patent System including the benefits and limitations, we would be happy to provide that information.
So, the important message is that the option of conversion is there for consideration, and in many instances can offer a low cost high value alternative to otherwise simply allowing your standard application to go abandoned and forfeiting all rights.