Australian innovation patents to end from 26 August 2021
Australian innovation patents are entering a long sunset. As of 26 August 2021, the Australian Innovation Patents system progressively draws to a close over the eight years to come. No fresh innovation patents can enter the system, though divisional of existing applications remain possible, for example.
Existing rights are unaffected
"Abolishing the innovation patent system is not intended to affect existing rights. The system will continue to operate for innovation patents that were filed before these amendments commence. In addition, existing rights to file divisional applications and convert a standard patent application to an innovation patent application will be maintained for any patent or application that was filed prior to the commencement date of these amendments. This is achieved under the legislation by requiring that any innovation patent filed after the commencement date must have a date of patent and a priority date for each claim that is before the commencement date."
This text well summarises the situation, and is drawn straight from the Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019.
Divisional innovation patent applications still available
New applications can be filed IF the application is for example a divisional application of a standard patent application pending before 26 August 2021. This will no doubt remain a compelling option for rights holders as part of an enforcement strategy, and will remain relevant for a time.
The Productivity Commission in its report into Australia’s Intellectual Property Arrangements criticised this tactic, but it remains open for the time being and is entirely legitimate under Australian patent legislation. These sunset provisions will affect competitors when considering their defensive strategies.
Post mortem: the Delnorth experience
The commercial value and strategic role of innovation patents is perhaps best conveyed by those innovation patents central to the landmark litigation in this area. This was proven in what remains the landmark case on the issue, namely Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 from 30 June 2009.
You will have seen Delnorth’s flexible road edge guide posts that are ubiquitous beside Australian roads as you travel beyond metropolitan and suburban areas. The product was a great success as the post would buckle without causing major damage if you happened to go over one, and immediately spring back as if nothing ever happened. This was in stark contrast to the heavy timber posts that had long been used previously. These could save you running off the road, but often at the cost of major structural damage.
The key to Delnorth’s innovation was developing a marker post formed from spring steel, a material familiar for demonstrating the required elasticity. Some prior proposals for using spring steel for highway markers were even identified in the United States patent literature. Nonetheless, identified differences—slight as they were—proved enough to confirm the validity of each of Delnorth’s three Innovation Patents, much to the disappointment of challenger Dura-Post.
Needless to say, innovation patents were a crucial asset to Delnorth, and their experience was echoed by many Australian SMEs who found similarly benefitted from their availability as they were establishing in the market with new product categories.
Strategic implications
More broadly, innovation patents will be missed by Australian innovators as an accessible entry into the patent system. Especially for product innovations where design protection wasn't quite enough. The system was attractive, indeed remarkable, for offering recognition and protection for innovations that would in many cases falter in the standard patent system. This leaves a small but meaningful gap in the landscape. There is as yet no consideration being given to a replacement for the Australian innovation patents system, and that discussion seems unlikely for the foreseeable future.
Don't forget utility models
Selected countries do have what are utility models. Theses are a patent-like and patent-lite style of registered IP that are intended to protect product innovation though registration of a ultility models drawings, claims and description. Typically the innovation can be 'smaller' than that required to support a regular patent. The innovation patent was somethging unique to Australia but it was a close cousin of the utility model. Utility models can be very effective when there is a need and those needs work well with the inherent limitations of utility models. First amongst these is geographic limitations. Only a patchwork of countries provide for utility model system, and this does not include the United States, for example. Some regional trading partners such as China, Japan, Korea for example, so have active utility model systems.
Also consider registered designs as a complement or alternative
The registered design system can in some rare instances be an acceptable substitute for an innovation patent. Often a registered design will be lacking as it only protects innovative visual design rather than underlying technical innovation.
