Following from our earlier articles reporting on the demise of the Australian innovation patent, the 25 August 2021 deadline is drawing nearer. If an Australian patent application is part of your plans, you would be well advised to ensure that you have a suitable patent application in place by then.
Anyone with an interest in securing Australian patent rights is advised to keep this date in mind. An innovator who files their first Australian non-provisional patent application1 by that date will be in a much better position than innovators filing after that date, because they will have the option of using the innovation patent system.
The innovator who files by 25 August 2021 will be better off even if the innovator doesn’t plan to use the innovation patent system. Standard patent applications are often pending for four years or so. During this time, the standard patent application can be converted to an innovation patent or provide basis for a ‘divisional patent application’ for an innovation patent.
If an infringement appears in the market during the (about) four-year pendency, a divisional patent application for an innovation patent is often a better option than expediting examination of the standard patent application, because:
- usually, an innovation patent can be made enforceable faster than the standard patent application;
- the owner of an innovation patent can ‘trump’ a competitor’s efforts to challenge the patent before the Patent Office by initiating court proceedings (see section 101(K) and 101(P));
- an innovation patent is more likely to be valid as it cannot be held invalid for want of an inventive step; and
- the pending standard patent application can remain on hand to provide a flexibility during the enforcement procedures.