Updated: Sep 2, 2021
The Intellection Property Laws Amendments Act 2020 mandated the end of the Innovation Patent system, which is due to be phased out 26 August 2021.
The Innovation Patent has been the work horse of small to medium sized businesses trying to capture and protect valuable innovation.
To be protected under the innovation patent system, an invention doesn’t have to satisfy standard inventive step requirements. Instead, the invention simply needs to include a novel feature of difference that contributes to the way the invention operates.
Essentially, the innovation patent system offers a short term (8year) patent designed to protect incremental inventions - inventions that otherwise wouldn’t satisfy the patentability requirements of a standard patent.
Incremental innovations were considered important to economic growth and development and the innovation patent was a reward to incentivize business investment in such incremental industry improvements.
The low validity threshold meant an innovation patent could be easily secured but the corollary was the innovation patent was difficult to invalidate, without a direct prior anticipation of the invention.
The innovation patent system was also seen as a useful litigation tool by Big Pharma because the rights available with an innovation patent are the same as a standard patent so an innovation patent could be targeted to an infringement, filed as a divisional application from a longer term parent application, and certified through to an enforceable right in a matter of months to assert against a competitor.
Use of the innovation patent in that context was tending to stifle competition instead of encouraging economic growth.
Some consideration was given to raising the validity threshold requirements to make an innovation patent more difficult to obtain but in the end the Productivity Commission simply recommended the innovation patent be abolished.
This is an unfortunate result for small to medium businesses but the good news is:
Existing innovation patents and innovation patents filed on or before 25 August 2021 (AEST) will continue in force until expired. This will ensure current rights holders are not disadvantaged.
You will still be able to file a divisional innovation patent application after 25 August 2021 (AEST), provided that the parent application for the divisional was filed on or before 25 August 2021.
You will still be able to convert a standard patent application to an innovation patent application provided the standard patent application was filed on or before 25 August 2021 (AEST).
No extensions of time will be available for late filings of innovation patents.
You will not need to bring forward the certification of existing innovation patents. You can continue to request certification at a time of your choice.
So, if you have any innovative products or processes you would like to protect, please get in touch early to discuss the option of filing an innovation patent application before the deadline of 25 August 2021.
Download a visual outline of the process below.
Ever been worried you’re buying a legitimate product or service?
Probably not, in a traditional store where you can have confidence in the purchase but this is a real problem with online shopping where the remote nature of the purchase can engender uncertainty about the provenance of offered goods or services.
Obviously this is not a problem with branded or trusted online stores, which can be relied on to utilise legitimate supply chains but the online economy provides fertile ground for counterfeit operators particularly adept at presenting their goods as legitimate.
IP Australia is trialing a new Smart Trade Mark to help provide greater confidence consumers are buying the real thing.
The Smart Trade Mark enables a trade mark owner to provide online authentication of their products or services and the places where they are available for purchase.
If an online store is selling goods or services that are not authenticated, those goods can be considered counterfeit.
The Smart Trade Mark uses blockchain technology and application programming interfaces (APIs) to connect information about the trade mark, such as who the owner is and where it is being used digitally to enable the trade mark owner to control legitimate trade mark use.
Without that control, consumers are susceptible to purchasing products they believe to be original but are instead of inferior quality and/or not covered by brand warranty.
The Smart Trade Mark system operates by the trade mark owner recording a specific product reference or domain address to establish a Smart Trade Mark. The registered Smart Trade Mark information is securely stored to provide digital verification using a Trust Badge to provide consumer confidence the online store is selling authentic products or services.
Multiple trust badges can be created by the trade mark owner simply providing web addresses to IP Australia to identify where the Trust Badge will be displayed.
The Smart Trade Mark is presently undergoing industry trials such as with the NRL to tackle counterfeit merchandise. If you are interested in being involved in future trials, please let me know or contact IP Australia HERE.