The end of the innovation patent era

Transition summary

• New innovation patent applications can be filed on or before 25 August 2021.
• After 25 August 2021, it will only be possible to file for a valid innovation patent by relying on an existing pending Australian patent application that has an effective filing date on or before 25 August 2021, assuming the effective filing date is less than 8 years ago (the term of an innovation patent):
  • It will be possible to convert the existing patent application to an innovation patent application after 25 August 2021.
  • It will be possible to file a divisional innovation patent application from the existing patent application after 25 August 2021.
• The 8-year term of the last innovation patent will expire by 25 August 2029.

Brief history

IP Australia’s announcement heralds the end of a second tier patent system in Australia, which started with the introduction of the “petty patent” in 1979. This second tier property had a shorter term of 6 years, was limited to 3 claims, had no pre-grant opposition and could not be used to protect an invention otherwise protectable by a standard patent. Notably, however, the same standard of inventiveness for a standard patent applied to the petty patent.

A review of the petty patent system by the Advisory Council on Intellectual Property (ACIP) led to a number of proposed changes including applying a true second tier test for inventiveness. This led to the birth of the innovation patent in 2001; a shiny new property offering an 8 year term with 5 claims, no substantive examination (although to enforce the patent required examination/certification), no pre-grant opposition and a new, and significantly lower, inventiveness threshold known as the “innovative step” test.

Rumblings of innovation patent discontent have been afoot for some time, with IP Australia publishing a consultation paper back in 2012 proposing that the innovative step threshold be replaced with the standard patent inventive step test. And this was all well before the economists started to review the economic impacts of the system, which culminated in the publication of the Productivity Commission’s final report on its Inquiry into Australia’s Intellectual Property Arrangements in December 2016. The recommendation for innovation patents? That they be abolished.

And so here we are, despite strong submissions and valiant campaigns including those led by the Institute of Patent and Trademark Attorneys (IPTA), the final blow has hit, confirming the end of a long history of the second tier patent system in Australia.

See our Resources page for more general information on innovation patents.