Following legislation changes, on Thursday 27 February 2020, IP Australia announced that it will no longer accept new innovation patent applications from 26 August 2021. The death of the innovation has been a protracted affair, so this decision by IP Australia was not unexpected.

For many, the innovation patent provides a fast and cheap way to protect intellectual property, and its death has left many wondering what, if anything, will replace an innovation patent to help SMEs grow their business.

How can I file an innovation patent after 26 August 2021?

Although IP Australia won’t be accepting new innovation patent applications from 26 August 2021, in reality, this date represents the beginning of the phase-out of the innovation patent. Thankfully, much like the discussion about abolishing innovation patents, the actual phase-out of innovation patents will occur over several years.

For innovation patents filed before 26 August 2021, they will continue to have effect until they expire. This means that, in principle, innovation patent applications can continue to have effect until 25 August 2029.

There are also two scenarios to file innovation patents after 26 August 2021:

  1. Filing a divisional innovation patent application from a parent standard patent application or an innovation patent application, provided the parent was filed on or before 25 August 2021.
  2. Converting a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021.

Simply put, so long as there is a pending Australian standard patent application or a granted (but not yet certified) innovation patent application as of 25 August 2021, there remains the option to file a divisional innovation patent application.

Further, if an innovation patent is filed as outlined above, it can be certified (i.e. examined) at any point during the life of the innovation patent. In practice, this means an applicant can certify and enforced their innovation patent against third parties after 26 August 2021.

It is important to note that extensions of time to file an innovation patent after 25 August 2021 will not be available. This means companies need to plan now how they are to file an innovation patent in place after 26 August 2021 otherwise they may miss the opportunity to do so.

Why would I want to file an innovation patent after 26 August 2021?

Apart from being faster and easier to grant compared with a standard patent, innovation patents only need to be novel and “innovative”, compared with novel and inventive for a standard patent. This makes innovation patents useful for protecting ‘less sophisticated’, ‘lower’, or incremental inventions.

The low innovative step of an innovation patent allows ‘lesser’ inventions to be patented, but it also provides a stronger defence of more ‘standard’ inventions. The lower threshold of an innovation patent means that without a direct knockout prior art document it can be hard to invalidate an innovation patent based on novelty and innovative step. This makes a certified innovation patent more of a threat to competitors than a granted standard patent, and highly valuable during the pursuit of infringers.

Companies that have filed an innovation patent by 25 August 2021, or have given themselves the option to file an innovation patent application after 26 August 2021, are positioned to have a greater ability to leverage their intellectual property. As many studies now find, companies who file patent applications are far more likely to grow.

If you have any questions about the innovation patent phase out, please get in contact.