The Innovation Patent, oftentimes viewed as an inferior patent to have, is, in fact, probably the most lethal patent type in the world to those who know how to wield it effectively.
Why the Innovation Patent?
The Australian innovation patent was conceived to provide shorter term patent protection for “lesser” inventions and ideas. In technical terms, whereas a standard (i.e. 20 year) patent must meet both the requirements for novelty and inventive step, the innovation patent is easier to get because it only needs to meet the requirements of novelty and innovative step.
However, as we will see below, because an innovation patent is easier to get, it is also harder to invalidate, making it a potent enforcement tool.
The innovation patent is easier to get
Difference to a Standard Patent
Now, the test from novelty is essentially factual. The real difference between the standard in the innovation patent is the question of the difference between innovative and inventive step.
The real difference between the standard in the innovation patent is the question of the difference between innovative and inventive step
In general terms, during examination, we must show the examiner that the novel differences of an invention meet the requirements for inventive and innovative step respectively for standard and innovation patent applications.
What’s the difference you ask? Well, inventive step is essentially a subjective question of whether the difference is obvious, considered from the perspective of the “person skilled in the art”. This can sometimes be quite a hard case to make out.
Innovative step simply means that the novel differences between the invention must make a substantial contribution to the way it works. This is generally quite easy to establish. For example, if a road barrier is made of spring steel so that it pops up once driven over by a truck, and the only difference between the road barrier and other road barriers is that it is made of spring steel, then this difference can be said to meet the requirements for innovative step because it makes substantial contribution to the way the road barrier works.
Because it is so easy to meet the requirements for innovative step, in practice, the only way and innovation patent can be knocked out is with a “direct hit” novelty destroying piece of prior art.
The Innovation Patent as a Potent Enforcement tool
Because the innovation patent only has to meet the lower threshold of innovative step, it’s unintended use in Australia is for enforcement and litigation proceedings. Why is this? Well, if you were to assert a standard patent against an alleged infringer, they could simply have the standard patent invalidated for being obvious (i.e. lacking inventive step). However, the alleged infringer would have a much harder time trying to knock out and innovation patent because it doesn’t matter whether in innovation patent is obvious or not.
The alleged infringer would have a much harder time trying to knock out and innovation patent
In this way, always recommend as a strategy the filing of a standard patent application, which you keep pending during the commercialisation stages of your idea is a so-called “mothership”. However, if you ever need to enforce your patent rights, we simply file a divisional innovation patent application from the mothership standard patent, leaving the mothership intact and using the divisional innovation patent as the weapon. In this process, we often times tailor the claims of the patent specifically around the activities of the alleged infringer so as to make a greater case for infringement.
The Duration of an Innovation Patent
The innovation patent is granted for an eight-year period, being less than a 20 year period for the standard patent.
A little-known fact of the innovation patent is that it is granted automatically after a simple formality check. This legitimately allows the patent holder to represent “Patented”, despite the patent not having been examined yet.
This can be an effective tool for those looking to utilise a “smokescreen” to scare competitors.
Rather, the innovation patent relies on a process of certification which is analogous to the examination of a standard patent application. In this way, the innovation patent is granted automatically, wherein, technically, it only becomes enforceable once it has been certified (examined) to meet the requirements for novelty and innovative step.
Certification is by way of a voluntary request which can be requested by the patent holder or any other member of the public.
Certification can be attained rapidly, such as with an a two month period which is ideal when looking to obtain enforceable position against an alleged infringer.
Innovation Patent Strategy
In light of the above, we highly recommend the use of the innovation patent as an enforcement tool. Having said this however, we never recommend the filing of an innovation patent in the first instance to protect an idea.
We never recommend the filing of an innovation patent in the first instance to protect an idea
The reason for this is that the innovation patent becomes published almost straight away making it difficult to capture improvements to the idea, and allowing your competitors to see the details of your idea (as opposed to the standard patent which only becomes published 18 months down the track).
Furthermore, once having filed an innovation patent, it is not possible to divide out or convert the innovation patent into a standard patent application
Rather, the strategy is to pursue a provisional patent application in the first instance followed by an Australian standard patent application. If at any time during the life of the standard patent application, we cannot overcome an objection as to lack of inventive step, or if we need to enforce rights, we simply file the divisional innovation patent.
In summary, if you are deciding which patent application would be most appropriate to your commercial objectives, facing inventive step difficulties during examination, or wish to enforce your rights against a competitor, please contact us today so that we can determine for you the most appropriate course of action.