And so the long sunset begins for the Australian Innovation Patents system.
As of 26 August 2021, the Australian Innovation Patents system progressively draws to a close over the eight years to come.
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.
New Innovation Patent 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 2016 report into Australia’s Intellectual Property Arrangements criticised this tactic, but it remains open and is entirely legitimate under Australian patent legislation.
These sunset provisions will for the time being also affect competitors when considering their defensive strategies.
More broadly, Innovation Patents will be missed by Australian innovators as an accessible entry into the patent system. 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 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 incident 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..
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.
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.
There is as yet no consideration being given to a replacement for the Australian Innovation Patents system.
There may in time be a proposal for a utility model system in Australia as enjoyed in some other countries—notably regional trading partners such as China, Japan, Korea for example.
Until new dawn rises.
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