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Author: Raelene Coelho

Abolition of the Australian innovation patent

The abolition of the Australian innovation patent will likely be confirmed in late 2019.

The Australian innovation patent is an 8 year patent intended to protect lower level inventions that do not qualify for 20 year patents. There have long been criticisms that innovation patents are too easy to get and can validly cover too much.

After much discussion and a few false starts (see e.g. here), a bill[1] to abolish the innovation patent was introduced to Parliament 25 July 2019 and was today referred to the Senate Economics Legislation Committee. The committee is due to report 4 September 2019. The progress of the bill can be tracked here.

There is a good chance that the bill will pass. Even so, innovation patents will not immediately disappear. The bill provides for an orderly phase-out that protects existing rights holders (in line with draft legislation discussed here). The timing will depend on when the bill passes and receives royal assent, although it seems likely that the last innovation patents:

  • will be linked back to an initial patent application filed by about late 2020; and
  • will expire by about late 2028.

Accordingly:

  • it may well be prudent to modify patent filing strategies as late 2020 draws near; and
  • innovations will no doubt remain controversial features of the Australian patent landscape for years to come.

 

 

[1] the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019

Meet with us at INTA Boston!

I would be very pleased to meet you at the 141st INTA Annual Meeting in Boston,
18 to 22 May 2019.

If you are attending, kindly send us an email with times you may be available for a discussion.

I am staying at the Boston Marriott Long Wharf, near the Boston Convention and Exhibition Centre (BCEC) and can meet you at either location, or somewhere else.

I look forward to meeting you soon in Boston!

Drafting patents ‘with reasonable skill and knowledge’

A recent Full Federal Court[1] decision[2] sheds light on what’s required for a patent specification to be drafted ‘with reasonable skill and knowledge’.

The Court rejected the notion that ‘the scientific justification for or substantiation of’ the original form of the claims must be known to the drafter and their instructor. On the other hand, the decision is not carte blanche for reciting arbitrary features and must be understood in view of the case-specific facts, including that:

  • there was a scientific justification for the original form of the claim; and

  • an earlier iteration of the Australian Patents Act applied (and differs from newer iterations in ways that may well be relevant).

Subsequent decisions may well hold that scientific justification and substantiation are required to draft newer patent applications ‘with reasonable skill and knowledge’.

Background

Whether damages are payable in respect of infringements prior to an amendment of a patent specification can turn on whether ‘the specification without the amendment was framed in good faith and with reasonable skill and knowledge’.[3]

The decision

The Court concluded that the relevant specification was framed in good faith and with reasonable skill and knowledge. On its way to this conclusion, the Court surveyed the predecessors to the relevant Australian provisions and cited[4] with approval[5] comments made in the UK parliament in 1883:

The principle of this provision was that the inventor who knowingly or carelessly claimed bad matter was not an object of sympathy.  On the other hand, an infringer who knowingly infringed the good and valid part of a patent because he had discovered some portion, perhaps unimportant, which was bad or invalid, was not entitled to sympathy or protection…

Whilst it appears that this broad statement of principle will continue to provide useful guidance, there is good reason to believe that the more specific aspects of the decision may be less relevant to newer patent applications.

After setting out the requirements of the applicable pre-2013 iteration of the Patents Act, the Court explains[6]:

It is not, however, an obligation of the patent applicant to explain how the invention was made or the theoretical basis underlying any stipulated integer:  NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1992] FCA 493; 24 IPR 1 at 27.  It follows, necessarily, that the patent applicant does not need to supply the proof that the invention works.  And if the patent applicant does not need to supply that proof, it does not need to have that proof for the purposes of drafting the specification. (Our emphasis.)

Newer iterations of the Patents Act incorporate enablement and support requirements, inviting consideration as to whether the specification discloses general principles commensurate with the scope of the claims and whether the claims are broader than is justified by the extent of the description, drawings and contribution to the art.

It is difficult to see how these newer requirements can be met without disclosing the theoretical basis underlying the invention and/or proving (that the invention works) through examples.

 

 

[1] The court of first appeal for Australian patent matters

[2] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183

[3] Section 115 of the Patents Act 1990

[4] At paragraph 28

[5] At paragraph 136

[6] At paragraph 133

Meet with us at INTA Seattle!

I am attending the INTA Annual Meeting in Seattle, 19 to 23 May 2018, and would be very pleased to meet you there.

If you are attending, kindly send us an email with times you may be available for a discussion.

I am staying at the Sheraton Hotel, near the Washington State Convention Centre (WSCC) and can meet you at either location, or somewhere else.

I look forward to meeting you soon in Seattle!

Innovation patents are to remain available…for now

In November 2017, we foreshadowed the demise of the Australian innovation patent in The end is nigh for innovation patents. That article was based on draft legislation including clauses for phasing out innovation patents from about July 2019.

At the time, all signs pointed towards Parliament passing the legislation in 2018. Sentiment had been turning against the innovation patent for some years. In 2015 we wrote The death knell for the Australian innovation patent? in response to official economic analysis.

On 28 March 2018, the legislation was introduced to Parliament without the abolishing clauses. So for now innovation patents remain available as powerful tools for guarding against imitators in the Australian market.

The omission of the relevant clauses was accompanied by very little official comment. IP Australia[1] simply notes (here) that:

The Government has decided to undertake further consultation targeted at better understanding the needs of innovative SMEs before the phase out of the innovation patent occurs.

It remains to be seen just how long innovation patents are to remain available. The arguments for abolition remain, and new legislation may not be too far away.

 

 

[1] The Australian Patent Office