Once the legislation comes into effect, a commencement date will be set 12 months and one day after the legislation receives royal assent from the Governor General and is signed into Australian law.

What you need to know

• • although innovation patents are being phased out, innovation patent applications filed before the commencement date can be certified and enforced.
• • divisional innovation patents may yet be filed if the filing date of the parent patent is before the commencement date.
• • likewise innovation patents may yet be converted from a standard patent if the filing date of the standard patent is before the commencement date.
• • if you or your clients have technology of questionable inventive step, consider filing an innovation patent before the commencement date to take advantage of the lower threshold innovative step.

New applications

This commencement timeframe ensures that applicants who have filed a new provisional or basic application before the assent date will continue to have the full 12 months to file an innovation patent claiming priority to that application. Applicants whose provisional or basic application is filed sometime between assent and the commencement date will have whatever period remains until that commencement to file an innovation patent claiming priority to that application, but will still have 12 months to file a standard patent claiming priority to that application.

Formalities check and acceptance

Currently, upon filing an innovation patent application, the Commissioner of Patents must perform a formalities check. If the application passes the formalities check, the Commissioner must accept the application and grant the innovation patent, noting that this is not yet an enforceable right.

After commencement of the revised legislation, the Commissioner must confirm also that the date of the innovation patent (if granted) would be before the commencement date. Generally, the “date of the patent” is the filing date of the non-provisional application.

Consequently, if the innovation patent application is filed after the commencement date, the application will not pass the formalities check and the innovation patent will not be granted.

Substantive examination 

Substantive examination is required to obtain enforceable rights in a granted innovation patent. After commencement of the revised legislation, the Commissioner must confirm that the priority date of each claim is before the commencement date.

This provision ensures that even if an innovation patent has been granted, the patentee cannot obtain an enforceable right if a claim does not satisfy this requirement.

Divisional applications

The date of the patent for a divisional patent is the date of the first non-provisional ancestor patent. Therefore, despite the changes to the formalities check and substantive examination for innovation patents, it will still be possible to file a divisional innovation patent from a standard patent application and have enforceable rights granted for the divisional innovation patent, even after commencement of the legislation, as long as the filing date of the parent patent is before the commencement date.

The effectiveness of this will, of course, be tempered by the 8-year term of an innovation patent.

Abolition or slow burn demise?

Although the government has often used and continues to use the term “abolition of innovation patents” suggesting immediate withdrawal, it seems that despite these legislative changes, innovation patents will be with us for some time to come – 9 years allowing for new innovation patents filed in the 12 months after assent and prior to commencement plus the 8-year term of an innovation patent. Accordingly, it seems that we will experience a slow burn demise of innovation patents, rather than immediate abolition.

Griffith Hack’s Dr Malcolm Lyons and Dr Justin Sweetman