Raising the Innovative Step
The Advisory Council on Intellectual Property (ACIP) were tasked, back in 2011, to look at the effectiveness of the innovation patent system in stimulating innovation by Australian SMEs. They have recently issued their final report on the matter.
The final report includes a number of “key” recommendations including:
- a modified innovative step threshold – being below the inventiveness required for inventive step but above that of the current innovative step;
- uncertified innovation patents should be called innovation patent applications, to avoid confusion;
- require certification of an innovation patent by its 3rd anniversary of filing; and
- exclude all methods, processes or systems from being patentable inventions for the innovation patent system.
The Australian Government is, apparently, considering its response to the Report. It is not expected that these changes will be made any time soon, but they certainly represent a significant change from current practice. Additional detail on the key recommendations is provided below.
Modified Innovative Step
The report has recommended a modified innovative step, above that of the current threshold. The reports suggestion is to use the test for inventiveness as set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 but modified such that the common general knowledge (CGK) used is the current definition of CGK.
The current standard of innovative step requires that a patent claim, when considered by a person skilled in the relevant art, in the light of the CGK as it existed in the patent area before the priority date of the relevant claim, varies from any piece of prior art, or pieces of prior art that a person skilled in the relevant art would treat as a single source of information, in ways that make no substantial contribution to the working of the invention.
The recommended standard of innovative step requires that a patent claim would have been obvious to a non-inventive skilled worker in the field in the light of the CGK at the time of the priority date of the relevant claim (CGK both in and out of Australia).
The current standard of inventive step requires that a patent claim would have been obvious to a non-inventive skilled worker in the field in the light of the CGK in combination with any piece of prior art, or pieces of prior art that a person skilled in the relevant art could be reasonably expected to have combined, at the time of the priority date of the relevant claim.
Whether the recommended standard of innovative step would succeed in creating a “robust and enforceable intellectual property right”, over and above what is currently available, only time will tell.
Renaming Innovation Patents
This is a relatively simple but, potentially, effective recommendation. Especially in the light of the numerous Chinese originating innovation patents that are been filed, apparently due to an incentive from the Chinese government for companies that have “granted” patent rights.
Requiring Certification within 3 years
Only 47% of innovation patents are renewed beyond 3 years and, therefore, the report believes that a recommendation to require certification within 3 years is appropriate to increase certainty in patent rights. They have also recommended that a fee for searching should be considered.
As the innovation patent is only 8 years in length, 3 years is a relatively significant proportion. However, it is unlikely that this will deter innovation patent filings.
Exclude all methods, processes or systems from being patentable inventions
Other jurisdiction which have “short form” patents, such as utility models, often have restrictions on what can be protected. Australia is unusual in that its short term and long term (innovation and standard) patents have very similar patentable subject matter requirements, the sole difference being that plants and animals, and the biological processes for the generation of plants and animals, cannot be validly claimed in an innovation patent.
The report, effectively, recommends bringing the Innovation patent in line with other jurisdictions. It seems that significant pressure from, in particular, the software industry has convinced the ACIP that protection of methods, processes or systems undermines innovation in that sector.
Further reading
- Australian innovation patents – applying for an innovation patent
- Obvious Inventions Patentable: The Australian Innovation Patent – an overview of the Innovation Patent (external website)